Microsoft Corporation v. n/a
Claim Number: FA1103001380357
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is n\a (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thekinectxbox.com>, registered with Wild West Domains, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2011; the National Arbitration Forum received payment on March 25, 2011.
On March 26, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <thekinectxbox.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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@thekinectxbox.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 20, 2011, 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 (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:
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.
Since 2001, Microsoft has offered video game consoles, software and accessories under its famous 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. 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. Microsoft delivers information and services relating to XBOX via its web sites, including <xbox.com> (also accessible via <kinect.com>).
Prior ICANN panelists have found that Microsoft has extensively marketed the XBOX video game console, XBOX gaming software, and XBOX compatible accessories, that Microsoft’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 the registration date for the disputed domain name in November of 2010.
KINECT is Microsoft’s brand name for a breakthrough sensor accessory introduced in 2010 for XBOX 360. KINECT is the subject of International Registration No. 1037974, designating various countries and dated April 29, 2010; Hong Kong Registration No. 301,599,599, with a priority date of October 29, 2009; and numerous pending trademark applications, including US Trademark Application No. 85/023,473 which has a priority date of October 29, 2009.
The KINECT sensor was formally announced at an event on Sunday June 13, 2010. Immediately thereafter, there was widespread, global press coverage of the KINECT name, including articles published in ABC, BBC, Bloomberg/BusinessWeek, CBS, CNET, CNN, Engadget, MTV, PC Magazine, Reuters, The Seattle Times, TheStreet.com, The Wall Street Journal, The Washington Post, and other sources throughout the world. This coverage was sufficiently pervasive to establish fame, common law rights and secondary meaning as of June 13, 2010. See Microsoft Corp. v. K E HENRY, FA1012001364807 (Nat. Arb. Forum Jan 25, 2011)(“the Panel finds that Complainant has established common law rights in the KINECT mark pursuant to Policy ¶4(a)(i) that date back to June 13, 2010”). See also Microsoft Corp. v. None a/k/a Prakash Prasad Timilsina, FA0906001271165 (Nat. Arb. Forum July 30, 2009)(finding that BING acquired secondary meaning on its launch date sufficient to sufficient to establish rights to satisfy the requirements of Policy ¶4(a)(i)).
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 XBOX and KINECT trademarks (“Complainant’s Trademarks”).
The disputed domain name incorporates Complainant’s KINECT mark and Complainant’s famous and highly distinctive XBOX mark in its entirety, merely adding the generic word “the” at the beginning and the most common gTLD, “.com” at the end.
These changes are not sufficient to avoid a likelihood of confusion with Complainant’s Trademarks. See Microsoft Corp. v. Mickaël Newton c/o (P), FA 1332788 (Nat. Arb. Forum Aug 21, 2010)(finding <kinectxbox.com> and <xbox-kinect.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v Domain Sale and Lease Individual aka Serkov Andrey, FA 1263117 (Nat. Arb. Forum June 29, 2009)(finding <xboxatomic.com> confusingly similar to XBOX and awarding transfer); Microsoft v K E HENRY, FA 1364807 (Nat. Arb. Forum Jan 25, 2011) (finding <kinectshoponline.com> confusingly similar to KINECT and awarding transfer); Microsoft v Mike Morgan, FA 1364809 (Nat. Arb. Forum Jan 24, 2011) (<wwwkinect.com> transferred); Microsoft v Ibosim-media, FA1364840 (Nat. Arb. Forum Jan 24, 2011)(<kinectpeople.com> and <kinectworld.com> transferred); Microsoft v Rennie Hand, FA 1365130 (Nat. Arb. Forum Jan 24, 2011) (<kinectgamesstore.com> transferred); Microsoft v David Inga, FA 1365132 (Nat. Arb. Forum Jan 31, 2011) (<gamekinect.com>, <gameskinect.com> and <kinectpro.com> transferred); AOL LLC v. John McLean, FA0703000944263 (Nat. Arb. Forum Apr. 26, 2007)(finding that <aolin2tv.com> is confusingly similar to AOL and awarding transfer); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain is confusingly similar to Complainant’s Trademarks.
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 name. 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 “n/a”. Respondent is not commonly known by Complainant’s Trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s 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 disputed domain resolves to a web site which contains links to other sites which allow visitors to purchase products. Presumably, Respondent receives compensation for directing consumers to third-party sites. 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 Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, Jan. 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); 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); 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 has taken Complainant’s KINECT and XBOX trademarks without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain. The use of a domain name that is confusingly similar to Complainant’s famous trademarks to attract consumers to Respondent’s own website, and/or to refer consumers to third parties, 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). See Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). “The Respondent’s use is little more than the use of a famous trademark to divert traffic to…itself.” Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwei, D2005-0642 (WIPO October 12, 2005) (finding no rights or legitimate interests in the domain name <msnmoney.com>).
There are no visible source identifiers on Respondent’s web site, other than the famous XBOX and KINECT trademarks in the URL’s, page titles, and elsewhere.[1] As a result, consumers are likely to believe that Respondent’s site originates with or is sponsored by Complainant. Attempting to pass oneself off as a trademark holder is not a legitimate use. See Crow v. LOVEARTH.net, FA203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant....”).
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 name in bad faith.
At the time that Respondent registered the disputed domain name in November of 2010, XBOX was famous and familiar to countless consumers worldwide. In addition, the domain name was registered after ubiquitous press coverage of the KINECT launch. It is clear that Respondent was not only familiar with Complainant’s KINECT and XBOX trademarks at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the KINECT and XBOX marks in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name 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 Corp. 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 has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's Trademarks as to the source, sponsorship, affiliation, or endorsement of services offered by Respondent and third parties. Presumably Respondent profits from the receipt of referral fees, and this is evidence of bad faith under §4(b)(iv) of the Rules. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) and Microsoft Corp. v. N/A c/o driss aloui a/k/a Carol Nicolas a/k/a helpshop c/o mycertstore, FA1009001347934 (Nat. Arb. Forum Nov. 10, 2010). See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Nothing on Respondent’s web site suggests any source or identity other than Complainant. This is likely to mislead unwary consumers who may believe they are dealing directly with Complainant when in fact they are dealing with an unauthorized and unsecure site. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS v. Robertson. See also Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“...imitating Complainant’s official website … constitutes bad faith use and registration pursuant to Policy ¶4(a)(iii)”); MidFirst Bank v. Adam Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); and DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s bad faith use of the title “Dodgeviper.com Official Home Page” gave consumers the misimpression that the complainant endorsed and sponsored a respondent’s website).
Additionally, Respondent has provided false contact information in connection with this domain name. The name of the Respondent “n/a” is clearly not the name of an individual or an entity and the email address provided in the contact information, p.rekia@btinternet.com is also false. Complainant’s counsel attempted to contact the Respondent prior to the filing of this complaint by sending an email to that address and it came back as undeliverable, noting “this user doesn’t have a btinternet.com account”. See Exhibit G. Providing false contact information is also further evidence of Respondent’s bad faith. See Retail Royalty Company and AEO Management Company v. Marcus Roland, FA 1364000 (Nat. Arb. Forum, Jan. 24, 2011)(submitting a false address and phone number in the WHOIS information found to be bad faith registration and use under Policy ¶4(a)(iii)); See also, Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).
Based on the foregoing, Respondent has registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a worldwide designer, manufacturer, and distributor of computer software, gaming products, and other electronic products, including the KINECT video game system. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its XBOX mark (e.g., Reg. No. 2,646,465 issued November 5, 2002). Complainant also owns several trademark registrations with the European Union’s Office for the Harmonization in the Internal Market (“OHIM”) for the XBOX mark (e.g., Reg. No. 1,611,235 issued August 6, 2001). Further, Complainant owns a trademark registration with the Hong Kong Intellectual Property Department (“HKIPD”) for its KINECT mark (Reg. No. 301599599 issued April 28, 2010).
Respondent, n/a, registered the <thekinectxbox.com> domain name on November 9, 2010. Respondent’s disputed domain name resolves to a website which contains information about Complainant’s products and third-party links to websites which allow visitors to purchase Complainant’s products.
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 presented evidence to show it owns numerous trademark registrations worldwide for its XBOX mark, 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). Further, Complainant has submitted evidence of trademark registration with the HKIPD for its KINECT mark (Reg. No. 301599599 issued April 28, 2010). The Panel finds such evidence establishes Complainant’s rights in the XBOX and KINECT marks under Policy ¶4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues the <thekinectxbox.com> domain name is confusingly similar to Complainant’s XBOX and KINECT marks. Complainant notes the disputed domain name contains both of its marks while adding the generic term “the.” Further, Complainant contends the addition of a generic top-level domain (“gTLD”) is not relevant to a Policy ¶4(a)(i) analysis. The Panel agrees and finds Respondent’s disputed domain name is confusingly similar to Complainant’s XBOX and KINECT marks under Policy ¶4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also 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 finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have rights or legitimate interests in the <thekinectxbox.com> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Am. Express Co. v. Fan 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.”). Out of an abundance of caution, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c).
Complaint argues Respondent is neither commonly known by the <thekinectxbox.com> domain name, nor has Complainant given Respondent permission to use Complainant’s marks. The WHOIS information identifies “n/a” as the registrant of the <thekinectxbox.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).
Complainant argues Respondent is using the disputed domain name to host a website which contains various third-party links to websites where Internet users are able to purchase Complainant’s products. Complainant contends Respondent receives compensation in the form of referral fees for sending Internet users to such websites, and such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel finds Respondent’s use of the disputed domain name is neither 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is using the disputed domain name to direct Internet users to third-party websites which sell Complainant’s goods. The Panel finds such diversion results in a loss of business for Complainant, and is evidence Respondent registered the domain name in bad faith pursuant to Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent registered the disputed domain name with the intent to commercially benefit from such use. Complainant argues that by posting third-party hyperlinks Respondent receives referral fees from the websites linked-to on Respondent’s website. The Panel agrees and finds Respondent’s use of the disputed domain name is evidence of bad faith under Policy ¶4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”); see also 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.’”).
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 <thekinectxbox.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: April 22, 2011
[1] Indeed, the copyright notice at the bottom of the page refers to a company called “The Kinect Xbox” which could easily be confused with a company owned by Complainant.
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