Microsoft Corporation v. Bingo Holdings c/o Shun Wang
Claim Number: FA1005001324672
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <xboxonline.com>, registered with UDOMAINNAME.com LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2010.
On May 18, 2010, UDOMAINNAME.com LLC confirmed by e-mail to the National Arbitration Forum that the <xboxonline.com> domain name is registered with UDOMAINNAME.com LLC and that Respondent is the current registrant of the name. UDOMAINNAME.com LLC has verified that Respondent is bound by the UDOMAINNAME.com LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xboxonline.com. Also on May 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <xboxonline.com> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <xboxonline.com> domain name.
3. Respondent registered and used the <xboxonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft
Corporation, offers video game entertainment systems, software, and accessories
under its XBOX mark. Complainant
provides information and services related to its mark at its official websites
resolving from the <xbox.com> and <xboxlive.com> domain
names. Complainant has established its
rights in the XBOX mark through its numerous registrations of the mark
worldwide, including with the United States Patent and Trademark Office (“USPTO”)
(e.g. Reg. No. 2,934,666 issued
October 18, 1999) and
Respondent, Bingo Holdings c/o Shun Wang, registered the <xboxonline.com> domain name on October 21, 2006. The disputed domain name resolves to a web directory displaying links to third-party websites, some of which are unrelated to Complainant and some of which are direct competitors of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts its rights in the XBOX mark through its multiple registrations of the mark worldwide, including with the USPTO (e.g. Reg. No. 2,934,666 issued October 18, 1999) and China’s SIPO (e.g. Reg. No. 1,698,267 issued April 18, 2000). The Panel finds Complainant’s federal trademark registrations both in Complainant’s country of business and in Respondent’s listed country of business sufficiently establish Complainant’s rights in the XBOX mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <xboxonline.com> domain name is confusingly similar to Complainant’s XBOX mark. Complainant contends the disputed domain name merely adds a descriptive term related to Complainant’s business under the mark (“online” describes how consumers can connect with other players through the Internet for multiple player video games offered in connection with its mark), and adds a generic top-level domain (“gTLD”) (“.com”). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). The Panel finds the addition of a generic term and a gTLD is insufficient to distinguish the disputed domain name from the mark, leaving Respondent’s disputed domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant’s allegation that Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). While the Panel may view Respondent’s failure to respond to the Complaint as truthfulness in the allegations, the Panel may choose to review the elements of the allegations to determine their truthfulness under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”)
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant also contends that it did not grant any authorization in the XBOX mark to Respondent. The WHOIS information lists the registrant of the disputed domain name as “Bingo Holdings c/o Shun Wang,” which, Complainant argues, does not support a contention that Respondent may be commonly known by the disputed domain name. The Panel finds, because Respondent is not commonly known by the disputed domain name and Complainant gave no authorization of its XBOX mark to Respondent, that Respondent lacks rights and legitimate interest in the <xboxonline.com> domain name pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant contends that Respondent’s disputed domain name resolves to a website displaying links to third-party websites, which include links to Complainant’s competitors. Complainant offers a video game interface in connection with its XBOX mark, and provides players the ability to connect with other players through the Internet for multiple player video games. Complainant argues that this is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the confusingly similar disputed domain name. Complainant further argues that Respondent likely receives referral fees when Internet users, seeking Complainant’s goods, click on the displayed links and are redirected to third-party websites. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s goods to third-party websites, and Respondent’s profiting from the redirection, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the <xboxonline.com> domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name due to its offer to sell said domain name to Complainant. The Panel finds that, while the offer to sell did not specify a price or other consideration, the willingness of the Respondent to sell, exhibited by the offer, is further evidence that Respondent lacks rights or legitimate interests in the <xboxonline.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s offer to sell the disputed domain name is evidence of Respondent’s bad faith registration and use. The Panel finds that evidence of an offer to sell, regardless of if a specified price is included in the offer, exhibits bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant asserts that Respondent’s registration and use
of the <xboxonline.com>
domain name was in bad faith and with intent to divert business from
Complainant to its competitors. Complainant’s
services in connection with its XBOX mark are heavily advertised and its goods
under the mark have sold in high volume around the world. Complainant offers video game players the
ability to connect with other players via the internet to engage in multiple
player video games. Complainant asserts
that Respondent likely knew of the XBOX mark due to its famous nature, and used
the mark in the disputed domain name to disrupt Complainant’s business by
displaying links to third-party websites of Complainant’s competitors. The Panel finds that offering a web directory
of links to third-party competitors of Complainant on a website resolving from
a confusingly similar domain name constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See David
Hall Rare Coins v.
Complainant contends that Internet users seeking
Complainant’s goods and services under its XBOX mark will become confused by
Respondent’s <xboxonline.com>
domain name. Internet users, Complainant further contends, will be confused as
to Complainant’s sponsorship of or affiliation with the site resolving from
Respondent’s disputed domain name.
Complainant alleges that Respondent profits from this confusion by
receiving referral or click-through fees when Internet users click on one of
the displayed links to third-party websites.
The Panel finds that Respondent’s commercial gain from Internet users’
likelihood of confusion constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 18, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum