Microsoft Corporation v. Richard Lorge
Claim Number: FA1103001380106
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Texas, USA. Respondent is Richard Lorge (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr Petter Rindforth, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2011; the National Arbitration Forum received payment on March 24, 2011.
On March 25, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 March 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@xbox360hits.info, postmaster@xboxhits.biz, postmaster@xboxhits.info, postmaster@xboxhits.net, postmaster@xboxhits.org, and postmaster@xboxproject.com. Also on March 28, 2011, 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.
A timely Response was received and determined to be complete on April 18, 2011.
On April 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr Petter Rindforth as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant states that it was founded in 1975, and is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Since 2001, the Complainant has offered video game consoles, software and accessories under its XBOX brand. In 2002, Complainant introduced XBOX LIVE which allows consumers to play XBOX games against other online players, among other benefits. In 2005, Complainant introduced its second generation gaming console and platform under the trademark XBOX 360. As of its 2008 fiscal year, Complainant had sold more than 19 million XBOX 360 consoles and XBOX LIVE had more than 12 million members. The Complainant delivers information and services relating to XBOX via its web sites, including <xbox.com> (Exhibit B of the Complaint, showing parts of the site).
The Complainant refers to prior UDRP decisions, where panelists have found that XBOX is a well-known or famous mark of the Complainant, such as Microsoft Corp. v. Bingo Holdings c/o Shun Wang, FA 1324672 (Nat. Arb. Forum June 18, 2010); Microsoft Corp. v. Party Night, d/b/a Peter Carrington, WIPO D2003-0501 (WIPO Aug. 18, 2003); Microsoft Corp. v. Phayze Inc., D2003-0750 (WIPO Nov. 13, 2003); and Microsoft Corp. v. domain for sale etvtelevision @ hotmal.com 111.221.444, D2003-0938 (WIPO Jan. 3, 2004).
The Complainant refers to Complainant’s registered trademarks, such as US registrations for XBOX and XBOX LIVE word marks, as well as a number of registered trademarks in other countries (Exhibit C of the Complaint).
The Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark XBOX, as they consist of the protected trademark with the addition of generic terms. According to the Complainant, these changes are not sufficient to avoid likelihood of confusion with Complainant’s trademarks – herewith referring to a number of UDRP decisions in support of this statement of confusion.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent is not commonly known by XBOX, nor has the Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
The disputed domain names resolve to “landing pages” that promote or link to third party products and services not offered by the Complainant (as shown by Exhibit D of the Complaint). The Complainant presumes that the Respondent received compensation for directing customers to the said third-party sites. Complainant points out that all disputed domain names have been registered for at least 2 years without legitimate or bona fide use. On the contrary, the Respondent has taken Complainant’s XBOX trademark without authorization in order to misleadingly and deceptively divert Internet users to its web sites for commercial gain.
Finally, the Complainant argues that the Respondent has registered the disputed domain names in bad faith. At the time that the Respondent registered the disputed domain names, XBOX was famous and familiar to countless consumers worldwide, making it clear that the Respondent was not only familiar with the Complainant’s XBOX mark at the time of registration, but intentionally adopted these domain names in order to create an association with the Complainant and its products and services.
The disputed domain names are linked to and promote third parties not affiliated with the Complainant, including Complainant’s competitors. The Complainant assumes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s XBOX Mark as to the source, sponsorship, affiliation, or endorsement of services offered by Respondent and third parties. Finally, the Complainant attempted to solicit a response from Respondent via a demand letter sent on March 18, 2011, in regard to several disputed domains (Exhibit E of the Complaint). Respondent has not replied, which the Complainant argues is further evidence of bad faith.
B. Respondent
The Respondent, in his e-mailed Response, states that he has not registered the disputed domain names, but bought them on the open market, as they were already registered by others 2, 6 and 9 years earlier.
The Respondent further refers to the fact that there exist a great number of other XBOX domains for sale on the open market, and questions why the Complainant has not filed actions against these. The Respondent questions the Complainant’s rights to “all domains with xbox as a prefix, suffix and in between”.
The Respondent asserts that Respondent has not developed or shown any bad faith “cyber-squat” since he bought the disputed domain names about 6 months ago. The domain names have not provided any monetary gain or request of monies on the part of the Respondent.
The Complainant is the owner of a number of registered trademarks for XBOX and related marks, such as
US No. 2,646,465 XBOX (registered November 5, 2002)
US No. 2,663,880 XBOX (registered December 17, 2002)
US No. 2,817,709 XBOX (registered February 24, 2004)
US No. 2,698,179 XBOX (registered March 18, 2003)
US No. 2,902,268 XBOX LIVE (registered November 9, 2004)
US No. 2,940,682 XBOX LIVE (registered April 12, 2005)
US No. 2,940,679 XBOX LIVE (registered April 12, 2005)
(Copies of the Certificate of Registrations provided by Exhibit C)
Exhibit C of the Complaint also show a list of marks, among them XBOX 360, claimed to be registered in a number of countries, among them USA (in fact the Panel finds that the Complainant has no less than 5 US registered XBOX 360 marks, all filed on May 12, 2005, and thereafter registered – such as US No. 3,300,210 registered on September 25, 2007).
The disputed domain names were registered by the Respondent in 2002 and 2008:
<xboxproject.com>, November 18, 2002
<xboxhits.biz>, December 30, 2008
<xboxhits.info>, December 30, 2008
<xboxhits.net>, December 30, 2008
<xboxhits.org>, December 30, 2008
<xbox360hits.info>, December 31, 2008
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."
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.
The Complainant alleges it designs, markets, and sells software and software-related services. According to Complainant, in 2001 Complainant began offering video game consoles, software, and accessories under its XBOX mark. Complainant has provided evidence of its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 issued November 5, 2002). Accordingly, the Panel finds that these trademark registrations sufficiently prove Complainants rights in the XBOX marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The Complainant claims that Respondent’s <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names are confusingly similar to Complainant’s XBOX mark. The Panel certainly finds that each of the disputed domain names include Complainant’s entire XBOX mark and one of the generic top-level domains (“gTLDs”) “,info,” “.biz,” “.net,” “.org,” or “.com.” In addition, the disputed domain names all are combined with the trademark XBOX and a generic term “hits” or “project”. Further, the <xbox360hits.info> domain name includes what is listed by the Complainant in Exhibit C of the Complaint, as a registered trademark “XBOX 360” in a number of countries like Japan, Mexico, European Community, Russian Federation and USA, combined with the non-distinctive word “hits”.
The Panel finds that the addition of generic terms like “hits” or “project” to a mark does not significantly distinguish a domain name from the mark. Further, the affixation of a generic top-level domain (“gTLD”) like “info,” “.biz,” “.net,” “.org,” or “.com” to a mark is irrelevant for Policy ¶ 4(a)(i) purposes. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Accordingly, the Panel concludes that the Respondent’s <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names are confusingly similar to Complainant’s XBOX and XBOX 360 marks.
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain names establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Complainant avers that Respondent is not commonly known by the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names. The WHOIS information identifies the domain name registrant as “Richard Lorge”, which Complainant argues is not similar to Complainant’s XBOX mark, or any of the disputed domain names. According to the Complainant, Respondent is not licensed by Complainant to use the XBOX mark and Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. Based on these allegations, the Panel concludes that the Respondent is not commonly known by the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The Complainant contends that Respondent uses the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names to resolve to websites that promote or link to third-party products, such as the “Sony PS3” and the “Nintendo Wii,” that compete with Complainant’s game console and related products. The screen shots of the disputed domain names provided by Complainant also include hyperlinks to third-parties unrelated to Complainant and the gaming console industry. This use is not denied or explained by the Respondent, and it is the Panel’s opinion that Respondent’s use of the disputed domain names is not 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Complainant provides screen shots of the websites resolving from the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names. Based on these screen shots, the resolving websites contain hyperlinks to third-parties that offer both competing gaming consoles and unrelated goods and services. While the Complainant does not claim that Respondent’s use of the disputed domain names disrupts Complainant’s business, the Panel determines that the featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant. Further, the Panel finds that Respondent’s use disrupts Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Complainant contends that the Respondent commercially benefits from the aforementioned hyperlinks by receiving click-through fees each time an Internet user clicks on one of the hyperlinks. Complainant argues that Respondent has attempted to create confusion as to Complainant’s affiliation with the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names in order to profit from this confusion. Looking at the web sites created and used by the Respondent, the Panel cannot do anything else than agree with the Complainant and find that the Respondent’s registration and use of the disputed domain names are evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
While the Respondent alleges that it does not receive any commercial gain from the disputed domain names, a statement that the Panel finds hard to believe, the Panel still finds that the Respondent is responsible for the content of the websites resolving from the disputed domain names. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”).
The Complainant also contends that the Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the XBOX mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Respondent has registered all disputed domain names shortly after the US trademark registrations in the name of the Complainant. Respondent has registered no less than 6 domain names confusingly similar to the Complainant’s trademarks, one of them - <xbox360hits.info> - registered about a year after the Complainants registration of XBOX 360. All together, these are convincing and obvious signs that the Respondent was well aware about Complainants trademarks at the time of the registration of each disputed domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xbox360hits.info>, <xboxhits.biz>, <xboxhits.info>, <xboxhits.net>, <xboxhits.org>, and <xboxproject.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 25, 2011
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