Microsoft Corporation v. RoberT JoneS
Claim Number: FA1103001380107
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is RoberT JoneS (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>, and <xboxhits.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2011; the National Arbitration Forum received payment on March 25, 2011.
On March 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>,and <xboxhits.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 March 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@livexboxdeals.com, postmaster@windowsvistabasic.com, postmaster@xbox360hits.com, and postmaster@xboxhits.com. Also on March 28, 2011, 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 April 21, 2011, 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.
Respondent has submitted correspondence which does not meet the requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy to be considered a Response. Notwithstanding, in the interests of justice, fairness and equity, the essence of the submission has been taken into consideration in the determination of this decision.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <livexboxdeals.com>, <xbox360hits.com>, and <xboxhits.com> domain names are confusingly similar to Complainant’s XBOX mark.
Respondent’s <windowsvistabasic.com> domain name is confusingly similar to Complainant’s WINDOWS VISTA mark.
2. Respondent does not have any rights or legitimate interests in the <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>, and <xboxhits.com> domain names.
3. Respondent registered and used the <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>, and <xboxhits.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, was founded in 1975 as a provider of software and related operating services. Complainant owns the WINDOWS VISTA mark for the promotion of its software goods and services. Complainant registered its WINDOWS VISTA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,235,107 issued April 24, 2007). Complainant also owns the XBOX mark, which it has used in connection with video game software and accessories since 2001. Complainant holds multiple trademark registration for its XBOX mark with the USPTO (e.g., Reg. No. 2,817,709 issued Feb. 24, 2004).
Respondent, RoberT JoneS, registered the <livexboxdeals.com> domain name on February 17, 2007, <xbox360hits.com> on December 31, 2008, <xboxhits.com> on December 30, 2008, and <windowsvistabasic.com> on July 9, 2008. The disputed domain names resolve to directory websites that promote third-party links offering products and services generally unrelated to Complainant’s business in computer and video game software.
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 demonstrated its rights in the WINDOWS VISTA and XBOX marks. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. See also 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). Complainant holds a trademark registration for its WINDOWS VISTA mark with the USPTO (Reg. No. 3,235,107 issued April 24, 2007) and for its XBOX mark with the USPTO (Reg. No. 2.817,709 issued Feb. 24, 2004). Therefore, the Panel finds that Complainant has demonstrated its rights in the WINDOWS VISTA and XBOX mark, according to Policy ¶ 4(a)(i), through its registrations with a trademark authority.
Complainant asserts that Respondent’s <livexboxdeals.com>, <xbox360hits.com>, and <xboxhits.com> domain names are confusingly similar to its XBOX mark. The disputed domain names all incorporate the mark in its entirety and differ only by adding the generic words “hits,” “live,” and “deals,” the number “360,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the inclusion of generic words does not adequately differentiate the disputed domain names from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the addition of a number fails to properly distinguish the domain name from Complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Finally, the Panel determines that the affixation of a gTLD does not avoid a finding of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s <livexboxdeals.com>, <xbox360hits.com>, and <xboxhits.com> are confusingly similar to the Complainant’s XBOX mark, pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <windowsvistabasic.com> domain name is confusingly similar to its WINDOWS VISTA mark. The domain name fully incorporates the mark and only differs by the deletion of a space between the words of the mark, the addition of the generic word “basic,” and the addition of the gTLD “.com.” The Panel finds that deleting a space between the words of a mark and adding a gTLD does not remove the domain name from the realm of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that adding a generic word also does not properly distinguish the disputed domain name from Complainant’s mark. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). Therefore, the Panel concludes that Respondent’s <windowsvistabasic.com> domain name is confusingly similar to Complainant’s WINDOWS VISTA mark, under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant makes the argument that Respondent has no rights or legitimate interests in the disputed domain names. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel determined that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show it does have rights or legitimate interests. Here, Complainant has made a prima facie showing in support of its claims against Respondent. Due to Respondent’s failure to respond to the Complaint, the Panel is free to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Even in light of this finding, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “RoberT JoneS,” which is not similar to any of the disputed domain names. Complainant also asserts that Respondent is not licensed by Complainant to use its WINDOWS VISTA or XBOX marks within the domain names. Given these facts, the Panel finds that Respondent is not commonly known by the <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>, or <xboxhits.com> 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 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).
Respondent uses the disputed domain names to operate directory websites with third-party links connecting to products and services generally unrelated to Complainant’s software business. Respondent likely collects click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain names to operate websites, which direct Internet users to sites unrelated to Complainant’s business, is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The Panel infers that Respondent receives click-through fees from the aforementioned third-party links on the resolving websites. Internet users searching for Complainant online may find Respondent’s website instead due to the confusingly similar domain name. Users may then become confused as to Complainant’s sponsorship of, or affiliation with, the resolving site and the third-party links displayed. By receiving click-through fees, Respondent attempts to profit from this confusion. The Panel finds that such use of the disputed domain names is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livexboxdeals.com>, <windowsvistabasic.com>, <xbox360hits.com>, and <xboxhits.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 21, 2011
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