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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Edward Tapia

Case No. DTV2005-0002

 

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington United States of America, represented by Schwimmer and Associates, United States of America.

The Respondent is Edward Tapia, Lake Balboa, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <moneycentral.tv> (the “domain name” is registered with “.tv” Corporation International.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2005. On May 3, 2005, the Center transmitted by email to “.tv” Corporation International a request for registrar verification in connection with the domain name at issue. On May 5, 2005, “.tv” Corporation International transmitted by email to the Center its verification response confirming that the Respondent is listed as the Respondent and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant corrected deficiency on May 18, 2005. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraph 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2005. The Respondent forwarded an unmotivated and late extension on June 14, 2005, which was denied. The Center notified the Respondent’s default on June 27, 2005.

The Center appointed Thomas P. Pinansky as the Sole Panelist in this matter on July 8, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

a. Microsoft manufactures, markets and sells products and services, including software information. It has distributed radio programs and provided news, financial and investment information under the MONEYCENTRAL trademark.

b. The United States Patent and Trademark Office (“USPTO”) has granted the following federal trademark registrations to Microsoft for the MONEYCENTRAL mark: MONEYCENTRAL, International class 36, registration No. 2478368, dated 8/14/01; MONEYCENTRAL, International class 41, registration No. 2483959, dated 8/28/01.

c. The first use dates of these registrations predate the creation date of the domain name.

d. Microsoft has spent substantial time, effort and money advertising and promoting the MONEYCENTRAL mark throughout the world.

e. In connection with the MONEYCENTRAL mark, Microsoft established a MONEYCENTRAL ‘channel’ on its MSN MONEY section of the MSN Network. There have been numerous press releases and news articles regarding the MONEYCENTRAL personal finance service, the MSN MONEYCENTRAL INVESTOR and MONEYCENTRAL LIVE!, Complainant’s radio show.

 

5. Parties’ Contentions

A. Complainant

a. The domain name <moneycentral.tv> is identical to Complainant’s trademark MONEYCENTRAL.

b. The disputed domain name is confusingly similar to the MONEYCENTRAL mark as well as Complainant’s website addresses and advertisements incorporating the MONEYCENTRAL mark. When he registered the disputed domain name, Respondent purposefully selected a domain name that wholly incorporated the MONEYCENTRAL mark. Because Respondent’s domain name entirely incorporates Microsoft’s mark, it is confusingly similar in appearance, sound, and commercial impression to the MONEYCENTRAL mark.

c. Moreover, as previous panels have found, the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA165119 (August 1, 2003); Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416.

d. In view of Complainant’s use of the MONEYCENTRAL mark in connection with media programming services, such as its MONEYCENTRAL radio show, the “.TV” top level domain aggravates the confusion in this instance.

e. In summary, Respondent’s <moneycentral.tv> domain name is confusingly similar to Microsoft’s Mark.

f. Respondent is not authorized or licensed to use the Mark and Complainant is unaware of any relationship, contractual or otherwise, between it and Respondent. To the best of Microsoft’s knowledge, Respondent does not own any trademark or other rights in the MONEYCENTRAL mark and does not offer any goods or services bearing the MONEYCENTRAL mark. Respondent does not refer to Complainant’s Mark on its websites.

g. Respondent Edward Tapia, is a cyber squatter with at least one other UDRP decision against him. In said decision, there is no evidence of Respondent doing business under any trading name or making legitimate use of any trademark, let alone MONEYCENTRAL.

h. When Complainant first learned of Respondent’s use and registration of the MONEYCENTRAL mark, Respondent was reproducing Complainant’s MSN MONEY content. Print-outs from the Internet Archive (“www.archive.org”) indicate that on April 26, 2004, through at least September 20, 2004, Respondent’s “www.moneycentral.tv” site was re-directing to Complainant’s “www.moneycentral.msn.com” content. These print-outs show a URL of “www.moneycentral.msn.com”, suggesting that Respondent was re-directing and had no content on his site. At the present moment, Respondent is presumably making unauthorized reproduction of the CNN Money’s home page.

i. Respondent has registered the disputed domain name in bad faith by doing so with knowledge of Complainant’s rights in the well-known MONEYCENTRAL mark and the obvious similarity between MONEYCENTRAL and<moneycentral.tv>. In view of Respondent’s utilization of Microsoft’s MSN MONEY content (accessible from Complainant’s “www.moneycentral.com” address), it is simply inconceivable that Respondent was unaware of Microsoft and its rights in its Mark.

j. Edward Tapia is a cyber squatter who has previously targeted America Online, Inc. In America Online, Inc. v. Edward Tapia, National Arbitration Forum Decision No. FA0409000328159, Tapia was ordered to transfer <aol.tv>. That decision came down in December 1, 2004. Respondent registered the <moneycentral.tv> domain name on March 8, 2004.

k. The fame and reputation of a complainant’s mark is persuasive in determining a respondent’s bad faith intent. In Telstra the panel found that the complainant’s numerous trademark registrations, together with its wide reputation in the name “Telstra”, left no other possible interpretation of the respondent’s registration of the domain name <telstra.org> other than that of bad faith. Telstra, WIPO Case No. D2000-0003, at paragraph 7.7. With regard to <moneycentral.tv>, Respondent has used a term reflecting Complainant’s services in order to divert traffic.

l. The mere fact of diversion – regardless of the content of Respondent’s website – is evidence of bad faith use of a domain name. Prior UDRP panels have found that this type of activity – using a domain name comprised of a well-known trademark to attract users to the Respondent’s website – constitutes a bad faith use of the domain name. See Big Dog Holdings, Inc. v. Day, NAF Claim No. FA93554, at paragraph 8 (March 9, 2000) (holding that diversion of traffic to infringing websites by using well-known trademarks in domain names is bad faith use); Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (Mere use of a holding page in connection with a famous mark constitutes bad faith use).

m. Finally, even if Respondent had not used the domain name to divert Internet users to an active website, his actions would still constitute registration and use in bad faith. Respondent must have expected that any use of the domain name – which is confusingly similar to Microsoft’s own “moneycentral.com”, domain name – would cause harm to Microsoft. The domain name wholly incorporates the MONEYCENTRAL mark and is so “obviously indicative” of Microsoft’s products and services that Respondent’s use of this domain name would “inevitably lead to confusion of some kind”. AT&T Corp. v. Rice, WIPO Case No. D2000-1276 at paragraph 6.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (See paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, Complainants must prove each of the following:

(i) the domain name is identical or confusingly similar to Complainant’s trademark or service mark;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s marks are registered throughout the world. The Complainant owns numerous marks using “MONEYCENTRAL”. The domain name wholly incorporates Complainant’s distinctive marks and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).

Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing”. (See among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683)

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (See paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States, or of many other countries would have made Complainant’s registrations known to the Respondent.

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <moneycentral.tv>, be transferred to the Complainant.

 

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Thomas P. Pinansky
Sole Panelist

Dated: July 20, 2005