Microsoft Corporation v. Kevin Mans
Claim Number: FA1010001349815
Complainant is Microsoft Corporation ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Kevin Mans ("Respondent"), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxisfree.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2010; the National Arbitration Forum received payment on October 1, 2010.
On October 1, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <xboxisfree.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 October 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@xboxisfree.com. Also on October 5, 2010, the 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 November 3, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 makes the following assertions:
1. Respondent’s <xboxisfree.com> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <xboxisfree.com> domain name.
3. Respondent registered and used the <xboxisfree.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has registered its XBOX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 831,979 issued July 3, 2001). Complainant launched video game entertainment systems, software and accessories under the mark in 2001 and the following year introduced a system to allow customers to play games under its mark against other online players. Complainant offers information and services related to its XBOX mark on its official websites resolving from the <xbox.com> and <xboxlive.com> domain names.
Respondent, Kevin Mans, registered the <xboxisfree.com> domain name on September 22, 2010. The disputed domain name resolves to a website that purports to offer codes for free access to Complainant’s online services related to its XBOX mark.
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 asserts it has rights in its XBOX mark due to its registration with the USPTO (e.g., Reg. No. 831,979 issued July 3, 2001). The Panel finds that Complainant’s registrations of its XBOX mark with the USPTO are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <xboxisfree.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Complainant argues that the disputed domain name adds generic terms (“is” and “free”), and adds a generic top-level domain (“gTLD”) (“.com”) to Complainant’s mark but that these alterations do not render the disputed domain name distinct. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel finds Respondent’s <xboxisfree.com> domain name, despite the minor alterations to Complainant’s mark, is confusingly similar to Complainant’s XBOX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. The burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent once Complainant has made a prima facie case in support of allegations to the contrary, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). 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)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <xboxisfree.com> domain name lists “Kevin Mans” as registrant. Complainant asserts that it has not provided license or authorization to Respondent for use of the mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services where the website resolving from the <xboxisfree.com> domain name displays links to third-party websites some unrelated to, and others competing with, Complainant. Complainant further alleges that Respondent is not using the disputed domain name for a legitimate noncommercial or fair use when Respodent likely receives click-through fees from the third-parties whose links are displayed on the website resolving from the <xboxisfree.com> domain name. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). The Panel finds that Respondent’s use of the disputed domain name to display links to third-party websites unrelated to Complianant and to third-party websites in competition with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s <xboxisfree.com> domain name resolves to a website that includes Complainant’s mark and logo. The Panel finds Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website does not reflect Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <xboxisfree.com> domain name resolves to a website that includes hyperinks to Complainant’s videogaming competitors. Such activity disrupts Complainant’s online videogaming business, as Internet users seeking Complainant’s services related to its XBOX mark will be diverted to sites featuring competing services. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel finds that listing links to Complainant’s competitors on a website resolving from a domain name that is confusingly similar to Complainant’s mark is disruptive and evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Internet users, searching for Complainant’s services, will be confused as to Complainant’s sponsorship or affiliation with the <xboxisfree.com> domain name when it resolves to a website displaying hyperlinks to third-party websites. Complainant alleges that Respondent profits from this confusion through its use in connection with a revenue-generating website by directing traffic to products or services offered by third-parties. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds Respondent’s use of the <xboxisfree.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxisfree.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 8, 2010
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