Microsoft Corporation v. cheng juan
Claim Number: FA1205001445083
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA. Respondent is cheng juan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com>, registered with GoDaddy.com, LLC.
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.
Judge Harold Kalina (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2012.
On May 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 22, 2012, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of June 11, 2012
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@<xbox8.org>, postmaster@<xboxcompanion.com>,
postmaster@<xboxlivetv.com>, postmaster@<xboxphone.com>, and postmaster@<xboxtablet.com>
by e-mail. Also on May 22, 2012, 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <xbox8.org>, <xboxcompanion.com>, <xboxphone.com>, and <xboxtablet.com> domain names are confusingly similar to Complainant’s XBOX mark.
Respondent’s <xboxlivetv.com> domain name is confusingly similar to Complainant’s XBOX LIVE mark.
2. Respondent does not have any rights or legitimate interests in the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names.
3. Respondent registered and used the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, uses its XBOX and XBOX LIVE marks for video game entertainment systems, software, and accessories. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the XBOX (e.g., Reg. No. 2,646,465 registered November 5, 2002) and XBOX LIVE marks (e.g., Reg. No. 2,902,268 registered November 9, 2004). Complainant also owns several trademark registrations with the Chinese State Administration for Industry and Commerce (“SAIC”) for the XBOX (e.g., Reg. No. 1,698,267 registered January 14, 2002) and XBOX LIVE marks (e.g., Reg. No. 5,735,436 registered September 14, 2009).
Respondent, cheng juan, registered the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names between August 23, 2010 and February 3, 2012. Respondent’s <xbox8.org> and <xboxphone.com> domain names do not resolve to active websites. Respondent’s <xboxcompanion.com>, <xboxlivetv.com>, and <xboxtablet.com> domain names resolve to websites that state: “Domain name for sale Email: john.han.smith@gmail.com.”
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 that it has protectable rights in the XBOX and XBOX LIVE marks. In furtherance of this assertion, Complainant submitted evidence showing that it owns trademark registrations for the XBOX (e.g., Reg. No. 2,646,465 registered November 5, 2002) and XBOX LIVE marks (e.g., Reg. No. 2,902,268 registered November 9, 2004) with the USPTO. Complainant also owns several trademark registrations with the SAIC for the XBOX (e.g., Reg. No. 1,698,267 registered January 14, 2002) and XBOX LIVE marks (e.g., Reg. No. 5,735,436 registered September 14, 2009). Based upon this information, the Panel finds that Complainant has rights in its XBOX and XBOX LIVE marks under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); 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)).
Further, Complainant argues that the <xbox8.org>, <xboxcompanion.com>, <xboxphone.com>, and <xboxtablet.com> domain names are confusingly similar to Complainant’s XBOX mark. Complainant asserts that the disputed domain names contain its XBOX mark entirely while adding either the numeral “8” or the generic terms “companion,” “phone,” or “tablet.” Complainant also notes that the disputed domain names add the generic top-level domain (“gTLD”) “.com” or “.org.” The Panel finds that Respondent’s additions of generic terms or a number, as well as a gTLD, are not sufficient to make the disputed domain names distinct from Complainant’s XBOX mark. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <xbox8.org>, <xboxcompanion.com>, <xboxphone.com>, and <xboxtablet.com> domain names are confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i).
Lastly, Complainant contends that the <xboxlivetv.com> domain name is confusingly similar to Complainant’s XBOX LIVE mark. The Panel notes that Respondent’s domain name removes the space between the terms of Complainant’s mark, while adding the generic term “tv” and the gTLD “.com.” Therefore, the Panel finds that Respondent’s disputed domain name is confsuingly similar to Complainant’s XBOX LIVE mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess rights and legitimate interests in the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant established a prima facie case that Respondent lacks rights and legitimate interests in the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names. Respondent has failed to respond to these proceedings, and the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether or not Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complaint argues that Respondent is not commonly known by the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names and that Complainant did not give Respondent permission to use Complainant’s mark. The WHOIS information identifies “cheng juan” as the registrant of the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names. The Panel finds that, without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 presented evidence showing that Respondent’s <xboxcompanion.com>, <xboxlivetv.com>, and <xboxtablet.com> domain names resolve to websites that state: “Domain name for sale Email: john.han.smith@gmail.com.” Complainant correctly notes, and the Panel finds, that Respondent’s use of the disputed domain names to offer them for sale is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).
Further, Complainant’s evidence also shows that Respondent’s <xbox8.org> and <xboxphone.com> domain names do not resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the <xbox8.org> and <xboxphone.com> domain names is evidence that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the domain names. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the <xboxcompanion.com>, <xboxlivetv.com>, and <xboxtablet.com> domain names to advertise the domain names for sale is evidence of bad faith registration and use. Complainant argues that Respondent’s attempts to sell the disputed domain names makes it clear that Respondent registered the disputed domain names in bad faith. The Panel agrees and finds that Respondent registered and is using the <xboxcompanion.com>, <xboxlivetv.com>, and <xboxtablet.com> domain names in bad faith pursuant 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. 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”).
Moreover, Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Complainant asserts, and supplies evidence to show, that Respondent’s <xbox8.org> and <xboxphone.com> domain names do not resolve to active websites. Failure to make an active use of a domain name, while not an enumerated Policy ¶ 4(b) factor, has been found to be evidence of bad faith registration and use in several prior UDRP proceedings. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and is using the <xbox8.org> and <xboxphone.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that, in light of the fame and notoriety of Complainant's XBOX and XBOX LIVE marks, it is inconceivable that Respondent could have registered the <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 27, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum