Microsoft Corporation v. Mickaël Newton c/o (P)
Claim Number: FA1006001332788
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kinectxbox.com> and <xbox-kinect.com>, registered with OVH.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010. The Complaint was submitted in both French and English.
On July 7, 2010, OVH confirmed by e-mail to the National Arbitration Forum that the <kinectxbox.com> and <xbox-kinect.com> domain names are registered with OVH and that Respondent is the current registrant of the names. OVH has verified that Respondent is bound by the OVH 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 July 14, 2010, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of August 3, 2010 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@kinectxbox.com and postmaster@xbox-kinect.com by e-mail. Also on July 14, 2010, the French language 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 August 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 "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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Founded in 1975, Microsoft is a worldwide leader in
software, services and solutions that
help people and businesses realize their full potential.
Microsoft
is the owner of numerous proprietary trademarks for its goods and services,
including the world famous trademark XBOX®.
Microsoft began using XBOX in 1998 in connection with TV and video
converters. In 2001, Microsoft launched video game entertainment systems,
software and accessories under the XBOX brand. In 2002, Microsoft introduced
XBOX LIVE which allows consumers to play XBOX games against other online
players, among other benefits. In 2005, Microsoft introduced its second
generation gaming console and platform under the trademark XBOX 360. Microsoft
delivers information and services relating to XBOX via its web sites which
include <xbox.com> and <xboxlive.com>. As of its 2008 fiscal year, Microsoft had
sold more than 19 million XBOX 360 consoles and XBOX LIVE had more than 12 million
members.
Prior
ICANN panelists have found that Microsoft has extensively marketed the XBOX
video game console, XBOX gaming software, and XBOX compatible accessories, that Complainant’s goods under the mark have sold in
high volume, and that XBOX is a well-known or famous mark. See
Microsoft Corp. v. Bingo Holdings c/o Shun Wang, FA1005001324672 (Nat. Arb. Forum June 18, 2010); Microsoft Corp. v. Party Night, d/b/a Peter
Carrington, Case No. D2003-0501
(WIPO August 18, 2003); Microsoft Corp.
v. Phayze Inc., Case No. D2003-0750 (WIPO November
13, 2003); and Microsoft Corp. v. domain
for sale etvtelevision @ hotmal.com 111.221.444, Case No. D2003-0938
(WIPO March 1, 2004).
Microsoft
has registered the XBOX, XBOX 360 and XBOX LIVE trademarks (collectively, the
“XBOX Mark”) with the United States Patent and Trademark Office and around the
world. These registrations were applied
for and issued well prior to June 12, 2010, the registration date for the
disputed domain names.
Microsoft recently introduced the KINECT™ Sensor, an
accessory for XBOX 360. KINECT is the subject of numerous pending trademark
applications, including US Trademark Application No. 85/023,473 which has a
priority date of October 29, 2009.
KINECT is also the subject of International Registration No. 1037974,
dated April 29, 2010, which designates various countries.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal
grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN
Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s famous, registered XBOX trademark, as well as its KINECT mark.
The domain names <kinectxbox.com> and <xbox-kinect.com> incorporate Complainant’s famous and highly distinctive XBOX mark in its entirety. Previous ICANN panels have universally found confusing similarity, and have granted a transfer, in cases where XBOX has been incorporated in a respondent’s domain name. See e.g., Microsoft Corp. v. Party Night, d/b/a Peter Carrington, D2003-0501 (WIPO August 18, 2003)(<xboxchaets.com>); Microsoft Corp. v. Woo Seungchul, FA0511000601455 (Nat. Arb. Forum January 20, 2006)(<myxbox.com>); Microsoft Corp. v. Instantxboxlive.com c/o Anisha Seth, FA0811001235725 (Nat. Arb. Forum January 13, 2009)(<instantxboxlive.com>); Microsoft Corp. v. S.H. INC, FA0909001284612 (Nat. Arb. Forum Nov. 3, 2009)(<httpxbox.com>); and Microsoft Corp. v. Bingo Holdings c/o Shun Wang, FA1005001324672 (Nat. Arb. Forum June 18, 2010)(<xboxonline.com>).
Respondent’s domain names combine XBOX with the new XBOX accessory name KINECT. Plainly this does not make confusion less likely. See Microsoft Corp. v. WG and Shahbaz Khan, FA0601000635281 (Nat Arb. Forum March 15, 2006)(finding <xbox360wirelesscontroller.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. S.H. INC, FA0909001284612 (Nat. Arb. Forum Nov. 3, 2009)(finding <microsoftonecare.com> confusingly similar to MICROSOFT and awarding transfer, where Complainant also offered a security product under the name Microsoft OneCare); Microsoft Corp. v. a zhong GG Ltd, FA0912001297546 (Nat. Arb. Forum January 20, 2010)(finding <microsoftoneapp.com confusingly similar to MICROSOFT and awarding transfer, where Complainant also offered a product called One App); and Microsoft Corp. v. Duan Xiang Wang, FA0906001269201 (Nat. Arb. Forum August 11, 2009)(finding <microsoftranslator.com> confusingly similar to MICROSOFT and awarding transfer, where Complainant also offered a service under the name “Microsoft Translator”).
Respondent’s domain names also add a hyphen and the generic TLD “.com.” These differences are uniformly regarded as inconsequential. See e.g. U.S. Bancorp Licensing, Inc. v. Frederick W. Scalise, Ph.D., FA0203000106124 (Nat. Arb. Forum June 19, 2002)( “[w]here the only difference between a mark and a domain name is the presence of a hyphen between the two prominent elements of the mark, such is not sufficient to negate confusingly similarity”); and Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwei, Case No. D2005-0642 (WIPO October 12, 2005) (“The addition of the generic top-level domain “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.”).
Plainly, Respondent’s domain names are confusingly similar to XBOX and KINECT.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in
the disputed domain names. Respondent is not commonly known by Complainant’s XBOX or KINECT
trademarks, nor has Respondent used the disputed domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use.
WHOIS identifies Respondent as Mickaël Newton and/or
Mickaël Newton c/o (P). Respondent is not commonly known by Complainant’s XBOX
or KINECT trademarks. Respondent is not affiliated with Complainant in any way.
Respondent is not licensed by Complainant to use Complainant’s XBOX or KINECT
trademarks. Respondent is not an authorized vendor, supplier, or distributor of
Complainant’s goods and services. See Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat.
Arb. Forum Dec. 22, 2004)
(finding no rights or legitimate interests where there was nothing in the
record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding
that the WHOIS information, and its failure to imply that Respondent is
commonly known by the disputed domain name, is a factor in determining that
Policy ¶4(c)(ii) does not apply).
The landing pages for the disputed domain names
promote third-party e-mail services that compete with Complainant. This is not
a use in connection with 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). See e.g., Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10,
2007) (finding
no legitimate interest in the domain name <fossill.com> where the domain
name resolved to a website featuring links to third party websites); Hewlett-Packard
Co. and Hewlett-Packard Dev. Co., L.P. v. SZK.com a/k/a Michele Dinoia, FA635480 (Nat. Arb.
Forum, March 7, 2006) (finding no legitimate interest where Internet users who
accessed the disputed domain name were redirected to a generic search-engine
website featuring links to services in competition with Complainant’s
services); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat.
Arb. Forum, May 6, 2003)
(holding that Respondent’s use of Complainant’s mark and the goodwill
surrounding the mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services); TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or
services); and
WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding
that the respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to the complainant’s mark,
where the respondent presumably received a referral fee for each misdirected
Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent’s domain names combine Complainant’s XBOX
and KINECT trademarks, without authorization, in order to divert Internet users
to a web site with no connection to Complainant. This is not a use in
connection with a bona fide offering of goods or services pursuant to Policy
¶4(c)(i), or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶4(c)(iii). Microsoft Corporation v. OzGrid Business
Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). See
also Nike, Inc. v. Dias, FA 135016 (Nat.
Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or
services where Respondent used Complainant’s mark without authorization to
attract Internet users to its website).
Respondent’s use is also not bona fide or legitimate if these names are merely parked. “[O]ne does not
engender rights or legitimate interests merely based on holding a disputed
domain name without any active use or demonstrable preparations to use the
disputed domain name in connection with 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations
omitted). In fact, failure to develop the site demonstrates a lack of genuine
interest in the domain name. Flor-Jon Films, Inc. v. Larson,
FA 94974 (Nat. Arb. Forum July
25, 2000).
For the above reasons, the Respondent has no rights
or legitimate interests in the disputed domain names.
C. REGISTRATION
AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN
Policy 4(a)(iii)):
Respondent registered the disputed domain names in
bad faith.
At the time that Respondent registered the disputed
domain names, Complainant’s XBOX Mark was famous and familiar to countless
consumers. It is clear from the distinctiveness and reputation of Complainant’s
mark that Respondent registered the disputed domain names with knowledge of
Complainant’s rights, and intended to create an association with Complainant
and its products and services. Knowledge of Complainant’s rights is clearer
still, since the domain names combine the XBOX trademark with the distinctive KINECT
accessory name.
Respondent’s registration of the disputed domain
names with knowledge of Complainant’s rights is evidence of bad faith
registration and use with regard to Policy ¶4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); Microsoft Corporation v. Cedric Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is
thus inconceivable to the Panel that [Respondent] is not familiar with the
Complainant’s ubiquitous MICROSOFT computer products or that his placement of
that trademark in the disputed domain name is coincidental”); Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here
an alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); Yahoo!, Inc. v. Ashby,
D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark
negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the name in bad faith).
Respondent’s domain names
point to a site that promotes e-mail services that compete with Complainant’s
services. Respondent or others
presumably derive revenue from these links, and this is further evidence of bad faith. See Nortel Networks v. BuyMeBuyMe (deriving revenue from links to competitors is evidence of bad faith
registration and use pursuant to Policy ¶4(b)(iv)); 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 Policy ¶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’”); and Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb.
Forum, January 10, 2007)(holding that respondent
registered and used the domain name <fossill.com> in bad faith by
diverting computer users to a website featuring links to Complainant’s
competitors).
Respondent registered the disputed domains on the eve
of Complainant’s official product introduction, amidst substantial pre-launch
press regarding Complainant’s selection of KINECT. The domains not only
incorporate the new KINECT name, but also the famous XBOX product brand with
which the new KINECT accessory is associated. This reflects opportunistic bad
faith. See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21,
2009)(finding that registration of <javastore.com> a little over a month
after the complainant’s announcement of a similarly named service was evidence
of “opportunistic bad faith under Policy ¶4(a)(iii)”); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a
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”); and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)(“If there
had been any doubt as to bad faith, the fact that registration was on the same
day the news leaked about the merger, which was put in evidence, is a compelling
indication of bad faith that respondent has to refute and which he has failed
to do. The panel finds a negative inference from this.”).
Based
on the foregoing, Respondent has registered the disputed domain names in bad
faith
B. Respondent failed to submit a formal Response in this proceeding, but submitted an email response that said:
“Hi,
I just received numerous emails about those DNS names. But I can't really understand why you don't give me a person in France who can talk with me!?
Why you don't intent a complaint to
other websites in
Many thanks
Regards
Mickaël”
Complainant, Microsoft Corporation, designs, manufactures and distributes interactive multiplayer game consoles and video games under the XBOX mark. Complainant has also established communications and chat room service through its mark. Complainant owns numerous worldwide trademark registrations for its XBOX mark including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 issued November 5, 2002) and with the European Union’s Office for the Harmonization of the Internal Marketplace (“OHIM”) (e.g., Reg. No. 1,611,235 issued August 6, 2001).
Respondent, Mickaël Newton c/o (P), registered the <kinectxbox.com> and <xbox-kinect.com> domain names on June 12, 2010. Respondent’s disputed domain names redirect Internet users to a third-party landing page that displays third-party links and advertisements to e-mail and communications services in competition with 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."
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 has established rights in its XBOX mark through its numerous worldwide trademark registrations, including those with the USPTO (e.g., Reg. No. 2,646,465 issued November 5, 2002) and the OHIM (e.g., Reg. No. 1,611,235 issued August 6, 2001). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”); see also 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).
Complainant contends the <kinectxbox.com> and <xbox-kinect.com> domain
names are confusingly similar to its XBOX mark and KINECT mark (whose
registration is pending at the USPTO).
Complainant contends both domain names feature its XBOX mark entirely
while adding the descriptive term “kinect” or adding a hyphen and the
descriptive term “kinect” and the generic top-level domain (“gTLD”)
“.com.” Complainant argues the term
“kinect” refers to a new feature on its XBOX video game system that allows
users to connect with each other via real-time video chat. Complainant further argues that the addition
of the gTLD “.com” is irrelevant to a Policy ¶4(a)(i)
analysis. The Panel finds the <kinectxbox.com> and <xbox-kinect.com> domain
names are confusingly similar to Complainant’s XBOX mark under Policy ¶4(a)(i). See Health Devices Corp. v.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have rights and legitimate interests in the <kinectxbox.com> and <xbox-kinect.com> domain names. Complainant is required to make a prima facie case in support of such allegations. Upon Complainant’s production of a prima facie case, the burden of proof shifts to Respondent to show it has rights or legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). The Panel finds Complainant has produced a prima facie case to support its allegations and the burden of proof has properly shifted to Respondent. While the Panel may presume Respondent does not have rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint), this Panel will evaluate the evidence to determine whether Respondent has rights and interests in the domain names pursuant to Policy ¶4(c).
Complainant contends the WHOIS information listing “Mickaël Newton c/o (P)” as the registrant of the domain names does not show that Respondent is commonly known by the <kinectxbox.com> and <xbox-kinect.com> domain names. Complainant further argues Respondent is not affiliated with Complainant in any way or licensed by Complainant to use Complainant’s XBOX mark. The Panel finds Respondent is not commonly known by the <kinectxbox.com> and <xbox-kinect.com> domain names under Policy ¶4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues Respondent is using the disputed domain names to redirect Internet users to a third-party landing page that promotes third-party e-mail and communications services that compete with Complainant. Complainant contends Respondent’s use is not in connection with 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). While Respondent’s email suggests he has a “fan site”, no such fan site seems to exist. The Panel finds Respondent’s use of the disputed domain name to divert Internet users to competing websites is not a use in connection with 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s disputed domain names resolve to a third-party website that displays hyperlinks to competing e-mail and communications services. The Panel infers Respondent’s diversion of Internet users to Complainant’s competitors results in a disruption of Complainant’s e-mail service and business online. Therefore, the Panel finds Respondent registered and used the <kinectxbox.com> and <xbox-kinect.com> domain names in bad faith pursuant to Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant further argues Respondent registered and is using the domain names in bad faith because Respondent presumably receives click-through or affiliate fees from its diversion scheme. The Panel finds Respondent’s use of the disputed domain names to redirect Internet users to the competitors of Complainant, presumably for financial gain, is further evidence that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Lastly, Complainant contends Respondent registered the disputed domain names on the eve of Complainant’s official product introduction and amid substantial press regarding Complainant’s Kinect gaming accessory. Complainant argues the domain names contain both its registered XBOX mark and the new KINECT mark for which Complainant has applied for trademark registration. Complainant alleges Respondent’s registration and use of the domain names reflects opportunistic bad faith. See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(finding that registration of <javastore.com> a little over a month after the complainant’s announcement of a similarly named service was evidence of “opportunistic bad faith under Policy ¶4(a)(iii)”); see also 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”). This Panel agrees.
The Panel finds Policy ¶4(a)(iii) 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 <kinectxbox.com> and <xbox-kinect.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: August 21, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum