Microsoft Corporation v. Simon Ward / Game Codes Ltd
Claim Number: FA1312001534229
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Simon Ward / Game Codes Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxgiftcards.com>, registered with ENOM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 13, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <xboxgiftcards.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@xboxgiftcards.com. Also on December 13, 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 January 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant launched the XBOX video game entertainment system, along with associated software and accessories, in 2001.
Complainant has registered the XBOX mark with the United States Patent and Trademark Office (“USPTO”), the European Community’s Office for Harmonization in the Internal Market (“OHIM”), and around the world.
Respondent’s <xboxgiftcards.com> domain name is confusingly similar to Complainant’s XBOX trademark. The disputed domain incorporates the XBOX mark in its entirety, adding only the generic phrase “gift cards” (which directly relates to Complainant’s XBOX products) followed by the most common generic top-level domain (“gTLD”), “.com.”
Respondent is not commonly known by Complainant’s XBOX mark. WHOIS information identifies Respondent as “Simon Ward/Game Codes Ltd.” Respondent is not affiliated with Complainant in any way, nor is Respondent licensed to use Complainant’s XBOX mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name resolves to a site which appears to be an actual Microsoft site, displaying the XBOX logos and similar header bar to the official XBOX site and a variety of information related to Complainant, XBOX, and Complainant’s gift card/reward programs. Respondent’s prominent use of Complainant’s trademarks is calculated and likely to lead visitors to believe that Respondent’s site originates with or is endorsed by Complainant site, thereby constituting passing off.
Respondent is using the disputed domain name to disrupt the business of Complainant because consumers looking for gift cards for XBOX products are likely to go to the disputed domain name believing that they are at Complainant’s website. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). By incorporating Complainant’s famous trademark into the disputed domain name, and by using Complainant’s trademarks and logos at the corresponding website, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. This conduct falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use. Respondent registered the disputed domain name with knowledge of Complainant and its rights in the XBOX mark. At the time that Respondent registered the disputed domain name, Complainant’s XBOX mark was famous and familiar to countless consumers. Respondent’s website displays Complainant’s distinctive logos.
Respondent registered the <xboxgiftcards.com> domain name on November 30, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, in a December 18, 2013 e-mail addressed to the National Arbitration Forum, Respondent unequivocally consents to the transfer of the <xboxgiftcards.com> domain name to Complainant.
Complainant has trademark rights in XBOX mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the at-issue domain name.
Respondent has unequivocally agreed to transfer the domain name to 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.
Consent to Transfer
Given the congruity of the issues and fact pattern in the instant case with that in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd., decided by this Panel earlier last year, and subsequently followed by this Panel in American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013), the Panel adopts the relevant part of its Universal Protein Supplements Corporation decision almost verbatim below. See FA1471116 (Nat. Arb. Forum January 2, 2013).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
As a prerequisite to obtaining the relief requested even where, as here, Respondent consents to such relief, Complainant must nevertheless demonstrate under Policy ¶4(a)(i) that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Complainant establishes rights in the XBOX mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO as well as registration with other registrars worldwide. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, the <xboxgiftcards.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name is constructed by adding the generic/descriptive term “giftcards” after Complainant’s mark, and then appending the generic top-level domain, “.com,” to the resulting string. These changes are insufficient to distinguish the at-issue domain name from Complainant’s XBOX mark under Policy ¶4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Given the foregoing and as discussed below, the Panel sees no basis for including any substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in the instant decision. When a respondent consents to transfer its domain name, judicial economy dictates that the arbitrating panel simply proceeds to grant Complainant’s requested relief in recognition that there is no dispute between the parties regarding the domain name’s ultimate disposition. The “consent to transfer” situation is somewhat analogous to where a complainant withdraws its complaint. In both cases there is no need for the arbitrating panel to issue a decision based on the merits of either Policy ¶4(a)(ii) or ¶4(a)(iii).
Some panels may disagree with this Panel’s position and urge that even though a respondent consents to transfer an at-issue domain name, the panel in such cases should nonetheless proceed to a decision containing analysis under Paragraph 4(a)ii and/or 4(a)iii. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel states:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
While the Graebel Van Lines panel goes on to suggest that allowing a domain name to be transferred by consent without complete paragraph 4(a) analysis shields cybersquatters from adverse findings, this Panel respectfully considers such concern to be misplaced. Rather, this Panel is of the opinion that the UDRP’s charge is limited to determining whether or not an at-issue domain name should be transferred from a respondent.
Judicial economy and the intent of the UDRP to provide an abbreviated low cost process to settle domain name disputes demands the expeditious and efficient resolution of such disputes to the extent reasonably possible. A respondent that consents to a complainant’s requested relief allows the parties, the dispute resolution provider, and the Panel, to dispense with having to consume time and resources on matters that are unessential to resolving the dispute. See Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc. D2008-1406 (WIPO December 8, 2008) (finding that “[w]hen a respondent consents to transfer … it serves little purpose to expend the panel's and the parties resources in an exercise which will have no impact on the ultimate outcome of the decision process.”). In Tokyu, like in the instant case, the respondent’s consent to transfer was unequivocal and express.
Furthermore where, as here, the respondent consents to the complainant’s requested relief such respondent’s submissions will typically offer little or no substantive challenge to the Paragraph 4(a) claims made by the complainant. In such cases it is likely that the response will be less effective in addressing Paragraph 4(a) concerns, if addressed at all, than where the respondent decides to defend its domain name on the merits. Conclusions drawn from analysis under Paragraph 4(a)ii and 4(a)iii that are based on the usually terse response of a respondent who has agreed to transfer its domain name are thus of dubious validity.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied, or the case dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What may be equated to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and the complainant establishes it has rights in a confusingly similar or identical at-issue domain name as Complaint does here, then only if surrounding circumstances call into question the cogency of the respondent’s consent should a panel proceed to engage in additional Paragraph 4(a) analysis. Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
Having established that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and further having established that Respondent consents to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxgiftcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 16, 2014
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