Microsoft Corporation v. Ibosim-media
Claim Number: FA1012001364840
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Ibosim-media (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kinectpeople.com> and <kinectworld.com>, registered with Spot Domain LLC d/b/a Domainsite.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2010; the National Arbitration Forum received payment on December 22, 2010.
On December 23, 2010, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <kinectpeople.com> and <kinectworld.com> domain names are registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the names. Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 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@kinectpeople.com and postmaster@kinectworld.com. Also on December 27, 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 January 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kinectpeople.com> and <kinectworld.com> domain names are confusingly similar to Complainant’s KINECT mark.
2. Respondent does not have any rights or legitimate interests in the <kinectpeople.com> and <kinectworld.com> domain names.
3. Respondent registered and used the <kinectpeople.com> and <kinectworld.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, provides computer software, services, and solutions, as well as video game consoles, software, and accessories for its XBOX brand. Complainant also sells a sensor accessory for the XBOX, which it markets under the KINECT mark. Complainant owns a trademark registration for the KINECT mark with the Hong Kong Trade Marks Registry (“HKTMR”) (Reg. No. 301,599,599 issued April 28, 2010).
Respondent, Ibosim-media, registered the <kinectpeople.com> and <kinectworld.com> domain names on June 14, 2010. The disputed domain names initially resolved to webpages offering the domain names for sale and inviting Internet users to send in an offer. After being contacted by Complainant, Respondent modified the disputed domain names so that they now resolve to blank pages that are not in active use.
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 owns a trademark registration for the KINECT mark with the HKTMR (Reg. No. 301,599,599 issued April 28, 2010). The Panel finds that evidence of a trademark registration with the trademark authorities of a country suffices to show Complainant’s rights in the KINECT mark according to Policy ¶ 4(a)(i), regardless of whether the trademark registration is in the same country as Respondent’s residence or business operations. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <kinectpeople.com> and <kinectworld.com> domain names are confusingly similar to Complainant’s KINECT mark because both disputed domain names combine Complainant’s exact mark with the generic terms “people” or “world” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining Complainant’s mark with a generic term has no effect on differentiating the disputed domain names from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also finds that added gTLDs are not considered in a Policy ¶ 4(a)(i) analysis as they are required elements of domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel finds that Respondent’s <kinectpeople.com> and <kinectworld.com> domain names are confusingly similar to Complainant’s KINECT mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests, Policy ¶ 4(a)(ii) places the burden on Complainant of presenting a prima facie against Respondent. As the Panel finds that Complainant adequately satisfied this burden, the obligation to show rights and legitimate interests transfers to Respondent. In defaulting and not providing a Response, Respondent has failed to show any evidence of rights and legitimate interests. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will consider the evidence in the record in light of the Policy ¶ 4(c) factors, however, to make an independent determination on Respondent’s rights and legitimate interests.
Complainant argues that Respondent is not licensed by Complainant to use the KINECT mark and is not affiliated with Complainant in any way. Complainant asserts that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. The WHOIS information for the disputed domain names identifies the registrant as “Ibosim-media,” a name with no nominal relationship to the disputed domain names. The Panel thus finds that Respondent is not commonly known by the <kinectpeople.com> and <kinectworld.com> domain names and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that prior to contacting Respondent regarding the disputed domain names, the <kinectpeople.com> and <kinectworld.com> domain names resolved to webpages offering the disputed domain names for sale and inviting Internet users to send in an offer. The Panel finds that Respondent’s offering to sell the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Complainant further contends that after contacting Respondent about the disputed domain names, Respondent modified the resolving webpages to display only a blank page with no content. The Panel finds that Respondent’s failure to actively use the <kinectpeople.com> and <kinectworld.com> domain names evidences a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s initial use of the <kinectpeople.com> and <kinectworld.com> domain names was to direct Internet users to Respondent’s webpages offering the disputed domain names for sale. The Panel finds that Respondent’s efforts to sell the disputed domain names shows that it registered and is using the disputed domain names in bad faith according to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that subsequent to being contacted by Complainant, Respondent deactivated the websites resolving from the <kinectpeople.com> and <kinectworld.com> domain names so that neither domain name now displays any active content. The Panel finds that Respondent’s failure to actively use the disputed domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant also contends that Respondent registered the <kinectpeople.com> and the <kinectworld.com> domain names the day after Complainant’s announcement of its official KINECT product introduction, amidst widespread global press coverage regarding Complainant’s selection of the KINECT mark. The Panel finds that the correlation between the date of the registration and the date of Complainant’s announcement indicates that Respondent opportunistically registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinectpeople.com> and <kinectworld.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 24, 2011
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