Microsoft Corporation v. liang lidong / lianglidong
Claim Number: FA1306001504077
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is liang lidong / lianglidong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxsports.us>, registered with Web Commerce Communications, Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received a hard copy on June 17, 2013.
On June 10, 2013, Web Commerce Communications, Ltd. confirmed by e-mail to the National Arbitration Forum that the <xboxsports.us> domain name is registered with Web Commerce Communications, Ltd. and that Respondent is the current registrant of the name. Web Commerce Communications, Ltd. has verified that Respondent is bound by the Web Commerce Communications, Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 17, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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) Rule for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "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 usTLD Policy, usTLD 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the XBOX mark. Respondent’s domain name is confusingly similar to Complainant’s XBOX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <xboxsports.us> domain name, and that Respondent registered and uses the domain name in bad faith.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that it is a worldwide leader in software, services, and solutions that help people and business realize their full potential. Complainant argues that it launched the XBOX video game entertainment system, along with associated software and accessories in 2001. Complainant contends that it is the owner of trademark registrations with China’s SAIC for the XBOX mark (e.g., Reg No. 1,698,267, registered January 14, 2002). The Panel notes that Respondent appears to reside in China. Although it is not necessary that Complainant hold trademark rights in the country where Respondent resides, nevertheless, the Panel determines that Complainant’s registration of the XBOX mark with China’s SAIC sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under UDRP ¶ 4(a)(i)).
Complainant alleges that the disputed domain incorporates the XBOX trademark in its entirety, adding only the generic or descriptive term “sports” followed by the gTLD “.us.” Respondent’s addition of the generic or descriptive term “sports” does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). 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 UDRP ¶ 4(a)(i)). Finally, Respondent’s addition of the ccTLD “.us” is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Therefore, the Panel concludes that Respondent’s <xboxsports.us> domain name is confusingly similar to Complainant’s XBOX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by Complainant’s XBOX mark. Complainant argues that the WHOIS information identifies Respondent as “liang lidong/lianglidong.” Complainant further asserts that Respondent is not affiliated with Complainant in any way. Complainant claims that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Thus, the Panel holds that Respondent is not commonly known by the <xboxsports.us> domain name pursuant to UDRP 4(c)(iii).
Complainant asserts that the disputed domain name is being used in connection with parked pages where Respondent presumably receives pay-per-click revenue. Respondent’s domain name resolves to a website featuring competing hyperlinks titled “DOWNLOAD GOOGLE CHROME,” “VIDEO GAMES AT REDBOX,” and “STOP SHARING FILES ONLINE.” Complainant contends that Respondent is using the domain name to attract traffic and revenue using Complainant’s famous trademark and to promote Complainant’s competitor. Accordingly, the Panel holds that Respondent is not using the <xboxsports.us> domain name in connection with a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to [UDRP] ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has the domain name listed for sale for $1,000. Respondent’s <xboxsports.us> domain name resolves to a webpage stating “The domain xboxsports.us is listed for sale for $1,000. Click here to purchase this domain name.” It is reasonable to infer that Respondent primarily intended to offer the domain name for sale at the time it registered the domain name; accordingly, the Panel finds that Respondent’s general offer to sell the domain name demonstrates that Respondent registered or is using the domain name in bad faith under 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 [UDRP] ¶ 4(b)(i).”).
Complainant claims that Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business. Complainant argues that Respondent’s disputed domain name resolves to a website that promotes services which compete with many of Complainant’s products and services. A respondent is using a domain name in bad faith where the respondent is using the domain name to provide competing hyperlinks. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel concluded that “Respondent’s disputed domain name resolved to a parking website which provided click through revenue to Respondent and which displayed links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration or use pursuant to [UDRP] ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s use of the <xboxsports.us> domain name disrupts Complainant’s business, evidencing bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent’s pay-per-click website promotes and links to third parties not affiliated with Complainant, including third parties promoting competing services. Respondent’s <xboxsports.us> domain name resolves to a webpage hosting competing hyperlinks titled “DOWNLOAD GOOGLE CHROME,” “VIDEO GAMES AT REDBOX,” and “STOP SHARING FILES ONLINE.” Complainant asserts that Respondent receives revenue from this scheme. Complainant contends that Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark. Accordingly, the Panel finds that Respondent is using the domain name to attract Internet users for its own commercial gain, demonstrating bad faith use or registration pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Complainant alleges that at the time Respondent registered the disputed domain name, Complainant’s XBOX mark was already famous and familiar to countless customers. Complainant argues that given the unique and distinctive nature of Complainant’s XBOX mark, it is clear that Respondent selected this domain name to capitalize on this obvious association with Complainant and its products and services. Thus, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The 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 UDRP."); 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxsports.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 16, 2013
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