Microsoft Corporation v. GKG.NET Domain Proxy Service / GKG.NET Domain Proxy Service Administrator
Claim Number: FA1303001488638
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is GKG.NET Domain Proxy Service / GKG.NET Domain Proxy Service Administrator (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freexboxgamecard.com>, registered with GKG.net, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.
On March 8, 2013, GKG.net, Inc. confirmed by e-mail to the National Arbitration Forum that the <freexboxgamecard.com> domain name is registered with GKG.net, Inc. and that Respondent is the current registrant of the name. GKG.net, Inc. has verified that Respondent is bound by the GKG.net, 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 March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2013 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@freexboxgamecard.com. Also on March 8, 2013, 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 April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Among other products, Complainant Microsoft launched its XBOX video game entertainment system in 2001 and it has been further developed since then.
2. Respondent owns numerous trademarks for its goods and services, including for the world famous trademark XBOX. Microsoft delivers information and services relating to XBOX via its web sites, including <xbox.com>.
3. Prior ICANN panelists have found that XBOX and XBOX LIVE are well-known or famous marks.
4. The disputed domain name is confusingly similar to Complainant’s famous, registered XBOX trademark.
5. The disputed domain name incorporates the XBOX trademark in its entirety, adding only the generic words “free,” “game card,” and the most common generic TLD “.com.” These elements are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s famous XBOX mark, particularly where the added elements “free game card” relate directly to Complainant’s XBOX products.
6. Respondent has no rights or legitimate interests in the disputed domain name.
7. Respondent is not commonly known by Complainant’s XBOX mark,
8. Seeking to promote unrelated goods using Complainant’s famous trademark does not reflect a bona fide offering of goods or services pursuant to Policy 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy 4(c) (iii).
9. Promotion of Complainant’s competitors is also not a bona fide offering of goods or services.
10. ICANN Panels considering comparable prize/survey schemes have universally determined that they do not reflect a legitimate or bona fide use of a domain.
11. Respondent registered the disputed domain name in bad faith.
12. Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services.
13. Furthermore, by promoting the products and services of third parties using Complainant’s famous mark, and a dubious prize/survey scheme promising free access codes for Complainant’s XBOX services, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s XBOX trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b) (iv).
14. Moreover, Respondent’s promotion of Complainant’s competitors (e.g., Nintendo) disrupts Complainant’s business and falls under Policy ¶ 4(b) (iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Among other products, Complainant launched its XBOX video game entertainment system in 2001 and it has been further developed since then.
2. Complainant has several registered trademarks for XBOX, for example Trademark Registered No. 2,646, 465 , registered on November 5, 20002 with the United States Patent and Trademark Office (“USPTO”) (“the XBOX mark”).
3. Respondent registered the disputed domain name on May 10, 2011. It resolves to a website where users are invited to provide their email address and password to participate in a prize/survey where the rewards include points for products provided by third parties including 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."
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 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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it does and it has provided evidence to the effect that it has several registered trademarks for XBOX, for example Trademark registered No. 2,646, 465, registered on November 5, 20002 with the United States Patent and Trademark Office (“USPTO”). The Panel accepts this evidence. Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the XBOX mark under Policy ¶ 4(a) (i). See 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).
It should also be noted, because it will become particularly relevant later in this decision, that Prior ICANN panelists have found that XBOX and XBOX LIVE are well-known or famous marks. See Microsoft Corp. v. ABK, FA1211001473573 (Nat. Arb. Forum Jan 21, 2013) (“Complainant’s XBOX and XBOX LIVE marks were, and are, famous and familiar to countless consumers”); Microsoft Corp. v. Shiguo, FA1205001445087 (Nat Arb. Forum July 5, 2012)(noting that XBOX is a “well-known” mark); Microsoft Corp. v. domain for sale etvtelevision @ hotmal.com 111.221.444, Case No. D2003-0938 (WIPO March 1, 2004)(finding bad faith based in part on the “famous nature” of the XBOX mark); Microsoft Corp. v. Zuopan, FA1206001447775 (Nat. Arb. Forum July 13, 2012)(noting that the XBOX mark is “well renowned”); and Microsoft Corp. v. Phayze Inc., Case No. D2003-0750 (WIPO Nov. 13, 2003)(“the XBOX mark is well known worldwide”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the XBOX mark. Complainant submits that it is , because it includes the whole of Complainant’s XBOX trademark and several generic words that do not negate confusing similarity but emphasise it, as the additional words relate directly to Complainant’s XBOX products and invite the user to participate free of charge in the prize/survey being offered. The Panel agrees with this submission.
The Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com, but it is now well established that the top level domain cannot negate a finding of confusion similarity that otherwise exists.
See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis) and Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Moreover, it is true as Complainant submits, that the whole of the trademark has been included in the domain name. The only additions are the words “game” and “card” which are intrinsic parts of the XBOX game and the word “free” which is simply included to entice potential users to the domain name and hence to the website to which it resolves. The internet user could not but conclude that this is a domain name relating to the well known game promoted under the name XBOX. That principle could not be better stated than it is in the decisions cited by Complainant: Microsoft Corporation v. ABK/George Owens, FA 1473573 (Nat. Arb. Forum, Jan. 21, 2013)(finding <xboxmusicpassfree.com> confusingly similar to the XBOX mark); Microsoft Corp. v. PRQ Inet KB / Swartholm, FA1206001450976 (Nat. Arb. Forum Aug. 13, 2012)(finding <xboxliverewards.com> confusingly similar to XBOX LIVE and awarding transfer). The Panel therefore finds that the domain name is confusingly similar to the trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s XBOX trademark and to use it in its domain name, adding generic words and giving the false impression by the construction of the domain name that it is an official domain name of Complainant and that it will lead to an official website of Complainant dealing with the XBOX game;
(b) Respondent has then used the domain name to promote unrelated goods, Complainant’s competitors and an illegitimate, prize/survey scheme;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant and Respondent is not sponsored by or legitimately affiliated with Complainant in any way;
(d) Complainant claims that Respondent is not commonly known by the domain
name. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant also submits that Respondent has been promoting unrelated goods using Complainant’s famous trademarks and that this does not reflect a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). Complainant supports this argument by submitting that the landing page of Respondent’s website is headed “Free Xbox Gamecard” and that “according to information on the site, people sign up by providing their email address and password and they participate in surveys which earn the user points that can be redeemed for prizes”. As it is apparent that the user’s rewards may be supplied by other companies and indeed by competitors, it is clear that this practice cannot give rise to a right or legitimate interest. That is so because Respondent is simply using Complainant’s trademark without permission to promote third party products. Such conduct has been held not to constitute a bona fide offering of goods or services pursuant to Policy 4(c) (I) or a legitimate noncommercial or fair use pursuant to Policy 4(c) (iii). The case cited by Complainant and concerning the XBOX itself supports that conclusion: Microsoft Corporation v. ABK/George Owens, FA 1473573 (Nat. Arb. Forum, Jan. 21, 2013)(finding use of the XBOX mark in connection with surveys that promote competing services 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);
(f) Moreover, Respondent’s use of the domain name involves promotion of Complainant’s competitors and that, likewise, cannot give rise to a right or legitimate interest in the domain name. Complainant demonstrates and the Panel accepts that the domain name has been used to promote goods and services in competition with those of Complainant. As the Panel agrees with Complainant’s submissions regarding the use of the domain name, it finds that such use of the domain name is not a Policy ¶ 4(c) (i) bona fide offering of goods and services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See e.g., Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")). See also Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distrib. Private Ltd, FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that using a domain name to display hyperlinks to the complainant's competitors and unrelated business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(g) In any event, as has been submitted, Panels considering comparable prize/survey schemes have decided that they do not reflect a legitimate or bona fide use of a domain name. See e.g., Target Brands, Inc. v. Henderson, FA1109001408381 (Nat. Arb. Forum Oct 24, 2011)(“Respondent uses [<targetrewards.com>] to enlist Internet users in Respondent’s survey program and promises Complainant’s gift cards in return for joining. The Panel determines that this use is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)”.).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services. The Panel, having examined the evidence, concludes that Respondent had actual knowledge of Complainant’s trademark at the time of registration. This is so because the entire XBOX mark is in the domain name and also because Respondent uses the trademark in its website, albeit an unauthorized use. This is evidence of bad faith. In view of the fame of Complainant’s mark which has been illustrated by the decisions referred to above and in view of the use of it made by Respondent, without permission, the Panel concludes that Respondent had actual knowledge of the mark at the time of the registration of the domain name and it was thus registered in bad faith; see Assoc.Materials, Inc. v. Perura Wells, Inc. FA154121 (Nat. Arb. Forum, May 23, 2003 (respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith).
Secondly, Complainant submits that by promoting the products and services of third parties using Complainant’s famous mark, and a dubious prize/survey scheme promising free access codes for Complainant’s XBOX services, Respondent has attempted to benefit commercially, unfairly and opportunistically, from the goodwill associated with Complainant’s XBOX trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Again , the decisions cited by Complainant are very much in point, as, for example , Microsoft Corp. v. PRQ Inet KB / Gottfrid Swartholm, FA1206001450976 (Nat. Arb. Forum Aug 13, 2012)(“Respondent operates this rewards program to confuse Internet users and, presumably, to gain a monetary benefit. Therefore, the Panel finds that Respondent registered and is using the … domain name in a bad faith attempt to commercially gain from Internet users’ mistakes under Policy ¶ 4(b)(iv)”.).That view is also consistent with general principle. Respondent is thus using the domain name in order to channel Internet users to third-party websites promoting both competing and unrelated products, which is evidence of bad faith. There is no doubt that the evidence supports that contention and the Panel so finds. See Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011)(finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Thirdly, Complainant submits that Respondent’s promotion of Complainant’s competitors (e.g., Nintendo) disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). The Panel agrees with this submission and it is clearly supported by the evidence. See, in support, the cases cited by Complainant: Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)); and Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the XBOX mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freexboxgamecard.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2013
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