Microsoft Corporation v. David Inga
Claim Number: FA1012001365132
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is David Inga (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gamekinect.com>, <gameskinect.com>, <kinectpro.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2010; the National Arbitration Forum received payment on December 27, 2010.
On Dec 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@gamekinect.com, postmaster@gameskinect.com, postmaster@kinectpro.com. Also on December 29, 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 Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names are confusingly similar to Complainant’s KINECT mark.
2. Respondent does not have any rights or legitimate interests in the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names.
3. Respondent registered and used the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corp., is a global provider of software and computer services. Complainant has been doing business in the field since 1975. Complainant recently unveiled a new product bearing the mark KINECT on April 26, 2010. This product is a gaming console accessory.
Respondent, David Inga, registered the disputed domain names on June 13, 2010. The <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names resolve to a site which offers news, links to Complainant’s competitors, and an offer to sell the site. Respondent presumably receives click-through fees from its site.
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 contends that it has established rights in the mark through the creation of a secondary meaning in the mark, KINECT. Previous panels have found that it is unnecessary to register a mark with a trademark authority to create rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Complainant has provided evidence of the marketing and development of its product using the KINECT mark; as well as, newspaper articles and correspondence building goodwill in the mark and supporting its claim. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). Therefore, the Panel finds that Complainant has established rights in the mark by providing sufficient evidence indicating that it has created a secondary meaning in its KINECT mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names are confusingly similar to its own KINECT mark. The disputed domain names incorporate the entire mark while adding the descriptive terms, “game” and “games,” along with the generic term “pro.” Respondent also added the generic top-level domain (“gTLD”) “.com” to the marks. The Panel finds that the addition of the terms along with the gTLD do not sufficiently differentiate the disputed domain names from Complainant’s KINECT mark 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 Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); 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.”). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s KINECT mark under Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent. Previous panels have found that once Complainant has made its prima facie case the burden shifts to Respondent to show that it has rights or legitimate interests in a disputed domain name. See 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.”). Respondent has failed to answer the initial complaint in this case allowing the Panel to assume that it does not have rights or legitimate interests in the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the entire record to determine whether Respondent has rights or legitimate interests in the mark according the factors included in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names. Respondent failed to submit any evidence showing that it is commonly known by the disputed domain names. The WHOIS information identifies the registrant as “David Inga.” The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also contends that Respondent is not making a bona fide offering of goods or services or engaging in a legitimate noncommercial or fair use of the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names. The disputed domain names resolves to a site that offers, inter alia, links to Complainant’s competitors. Previous panels have found that maintaining a confusingly similar site with links to Complainant’s competitors as affirmative evidence that Respondent lacks rights or legitimate interests in the domain names. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent also offers the disputed domain names for sale as part of the business it conducts on the website to which the disputed domains resolve. The Panel finds that Respondent offer to sell the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names as affirmative evidence that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant asserts that Respondent’s offer to sell the disputed domain names is evidence of bad faith registraition and use by respondent under Policy ¶ 4(b)(i). Previous panels have found that registration and use of domain names with the intent to sell or offering to sell the domain names registered is affirmative evidence of bad faith registration and use. 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 Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). Therefore, the Panel finds that Respondent did registrer and use the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names in bad faith according to Policy ¶ 4(b)(i).
Complainant also asserts that Respondent registered and is using the disputed domain names in bad faith because of the commercial gain Respondent receives from the sites. Under Policy ¶ 4(b)(iv), Respondent would be registering and using the dispute domain names in bad faith if it is using the site for commercial gain. Respondent’s disputed domain names resolve to a site offering links to Complainant’s competitors. Based on the presumption that Respondent receives revenue via click-through fees, the Panel finds that Respondent has registered and used the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names in bad faith according to Policy ¶ 4(b)(iv). 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The panel finds that the requirements of Policy ¶ 4(b)(iv) have been met.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <gamekinect.com>, <gameskinect.com>, <kinectpro.com> domain names be TRANSFERRED from Respondent to Complainant..
Louis E. Condon, Panelist
Dated: January 31, 2011
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