Microsoft Corporation v. nairf
Claim Number: FA1012001364857
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is nairf (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-kinect.com>, registered with GoDaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2010; the National Arbitration Forum received payment on December 22, 2010.
On December 27, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoft-kinect.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2011 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@microsoft-kinect.com. Also on December 30, 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 January 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the exclusive rights to the MICROSOFT and the KINECT marks.
Complainant offers video games, software and accessories under its MICROSOFT mark, one of which is the game console “XBOX.”
Complainant uses the KINECT mark in connection with an advanced sensor accessory for the “XBOX.”
Complainant holds trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for its MICROSOFT mark (including Reg. No. 1,200,236, issued July 6, 1982).
Complainant also holds a trademark registration with the Hong Kong Trade Marks Registry (“HKTMR”) for its KINECT mark (Reg. No. 301599599, issued April 28, 2010).
Respondent registered the <microsoft-kinect.com> domain name on June 14, 2010.
The disputed domain name resolves to a website offering the domain for sale, and also displays a link entitled “Visit us” which, if clicked, redirects Internet users to Complainant’s official website at <xbox.com>.
Respondent’s <microsoft-kinect.com> domain name is confusingly similar to Complainant’s MICROSOFT and KINECT marks.
Respondent is not commonly known by either of Complainant’s MICROSOFT or KINECT marks.
Respondent is not authorized to use either the MICROSOFT or KINECT marks.
Respondent does not have any rights to or legitimate interests in the <microsoft-kinect.com> domain name.
Respondent registered and uses the <microsoft-kinect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in both the MICROSOFT and KINECT marks pursuant to Policy ¶ 4(a)(i) via registration of the marks with pertinent trademark authorities. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations). This is true without regard to Respondent’s country of residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <microsoft-kinect.com> domain name is confusingly similar to Complainant’s MICROSOFT and KINECT marks. The disputed domain name contains both marks in their entirety, and merely adds a hyphen between the two and the generic top-level domain “.com.” The combination of two of such complainant’s marks renders a disputed domain name confusingly similar to the marks in question. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).
Similarly, the addition of a hyphen and a gTLD are not sufficient to distinguish the disputed domain name from Complainant’s marks. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Therefore, the Panel concludes that Respondent’s <microsoft-kinect.com> domain name is confusingly similar to Complainant’s MICROSOFT and KINECT marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights to and legitimate interests in the <microsoft-kinect.com> domain name. Once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it does have rights to or legitimate interests in a contested domain name. See, for example, Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case on the point of Respondent’s rights to and interests in the contested domain name. Owing to Respondent’s lack of a response to the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the <microsoft-kinect.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the contested domain name and that Respondent is not authorized to use either the MICROSOFT or KINECT marks. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “nairf,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <microsoft-kinect.com> domain name so as to have established rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
Complainant also alleges, without objection from Respondent, that the website resolving from Respondent’s domain name displays a link which redirects Internet users to Complainant’s official <xbox.com> website. This 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). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a contested domain name suggests that that respondent lacks rights to or legitimate interests in the domain).
Finally, there is no dispute as to complainant’s assertion that the website resolving from Respondent’s domain name displays a message offering the domain name for sale. Respondent’s offer to sell the disputed domain name is additional evidence that Respondent lacks rights to and legitimate interests in the domain under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct purporting to sell a domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights to or legitimate interests in a contested domain where a respondent registered the domain name with the evident intention of selling it).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent displays a message on the <microsoft-kinect.com> domain name offering the disputed domain for sale. This is evidence that Respondent registered the disputed domain name for the primary purpose of selling it, which is in bad faith pursuant to 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 Policy ¶ 4(b)(i).
See also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (determining that a respondent registered and used the <worldgyms.com> domain name in bad faith because it was offering it for sale as “one of the most popular names and website in the fitness industry.”).
Furthermore, it is evident on this record that Respondent had actual or constructive notice of Complainant’s rights in the MICROSOFY and KINECT marks when it registered the disputed <microsoft-kinect.com> domain name. This is a further indication of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive knowledge of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <microsoft-kinect.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 31, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page