Microsoft Corporation v. Jordin Barth / InstaCards
Claim Number: FA1211001473274
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Jordin Barth / InstaCards (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xboxfitness.com> and <xboxfitness.net>, registered with GoDaddy.com, Inc.
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 November 28, 2012; the National Arbitration Forum received payment on November 28, 2012.
On November 30, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <xboxfitness.com> and <xboxfitness.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@xboxfitness.com, postmaster@xboxfitness.net. Also on December 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 31, 2012, 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 a formal response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies Respondent as “Instacards” or “Jordin Barth.” Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s XBOX mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
ii. Prior to Complainant’s counsel contacting Respondent, the disputed domain names were inactive and did not resolve to any active content. After being contacted by Complainant’s counsel, Respondent redirected each of the domain names to another domain name that he owned at <xbf.com>.
i. Respondent registered the disputed domain names wanting to take unfair advantage of the fame of Complainant’s trademark and the risk that customers looking for Complainant’s new products would mistakenly go to Respondent’s site instead.
ii. Respondent’s disputed domain names were inactive from the time of registration in 2009 until Complainant’s counsel contacted Respondent in November of 2012.
iii. Respondent registered the disputed domain names with knowledge of Complainant’s rights in the XBOX mark.
B. Respondent
Respondent has submitted e-mail correspondence saying that he had invested time and money in the disputed domain names, and asking Complainant to not take the disputed domain names from him. However, Respondent failed to submit a formal Response in this proceeding as required by the Rules.
Complainant, Microsoft Corporation, is a worldwide leader in software goods and services. Complainant is the owner of numerous trademarks for its goods and services, including the world famous trademark XBOX. Complainant has used the XBOX brand for video game entertainment systems, software, and accessories in the United States, Canada, and around the world. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the XBOX mark (e.g., Reg. No. 2,646,465 registered November 5, 2002). Complainant also owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the XBOX mark (e.g., Reg. No. 582,551 registered May 28, 2003). Complainant also owns numerous trademark registrations for the XBOX mark in various countries throughout the world.
Respondent, Jordin Barth / InstaCards, registered the <xboxfitness.com> domain name on June 3, 2009 and registered the <xboxfitness.net> domain name on June 15, 2009. Prior to Complainant’s counsel contacting Respondent, the disputed domain names were inactive and did not resolve to any active content. After being contacted by Complainant’s counsel, Respondent redirected each of the domain names to another domain name that he owned at <xbf.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."
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.
In view of Respondent's failure to submit a formal 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.”).
Complainant is the owner of numerous trademarks for the world famous trademark XBOX. Complainant has used the XBOX brand for video game entertainment systems, software, and accessories in the United States, Canada, and around the world. The Panel concludes that Complainant’s registration of the XBOX mark with various trademark offices throughout the world, including with the CIPO and USPTO, are sufficient to demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Complainant contends that Respondent’s <xboxfitness.com> and <xboxfitness.net> domain names are confusingly similar to Complainant’s XBOX trademark as they incorporate the XBOX mark in its entirety and combine it with the generic or descriptive term “fitness.” Complainant argues that the added term relates directly to Complainant’s XBOX platform. The Panel concludes that the addition of a descriptive term does not adequately distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Complainant also argues that Respondent adds the most common gTLDs, “.com” and “.net,” to the end of the disputed domain names. The addition of a gTLD does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that Respondent’s <xboxfitness.com> and <xboxfitness.net> domain names are confusingly similar to Complainant’s XBOX trademark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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).
Complainant argues that Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies Respondent as “Instacards” or “Jordin Barth.” Complainant contends that Respondent is not affiliated with Complainant in any way. Complainant asserts that Respondent is not licensed by Complainant to use Complainant’s XBOX mark. Complainant argues that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that prior to Complainant’s counsel contacting Respondent, Respondent’s disputed domain names were inactive and did not resolve to any active content. Complainant asserts that after being contacted by Complainant’s counsel, Respondent redirected each of the domain names to another domain name that he owned at <xbf.com>. The Panel finds that the 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 under Policy ¶ 4(c)(iii).
Although Complainant does not argue any of the traditional Paragraph 4(b) arguments, Paragraph 4(b) is not meant to be a conclusive list of what constitutes bad faith under Policy ¶ 4(a)(iii). The examples of bad faith in Paragraph 4(b) are intended to be illustrative, rather than exclusive. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant argues that Respondent registered the disputed domain names wanting to take unfair advantage of the fame of Complainant’s trademark and the risk that customers looking for Complainant’s new products would mistakenly go to Respondent’s site instead. Complainant contends that it announced its newest motion controller for the XBOX at E3 2009 on June 1, 2009, and Respondent registered <xboxfitness.com> two days later, and registered <xboxfitness.net> another twelve days later. Complainant asserts that Respondent’s use and registration of the disputed domain names after Complainant’s launch of its new XBOX controller demonstrates opportunistic bad faith. The Panel finds that Respondent’s registration of the disputed domain names shortly after Complainant’s launch of its new product is evidence of bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Complainant asserts that Respondent’s disputed domain names were inactive from the time of registration in 2009 until Complainant’s counsel contacted Respondent in November of 2012. The Panel finds that Respondent’s inactive use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the XBOX mark. The Panel finds that, due to the fame of Complainant's XBOX mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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)."
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxfitness.com> and <xboxfitness.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 14, 2013
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