Microsoft Corporation v. Sophia c/o Phia So
Claim Number: FA1104001386174
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Sophia c/o Phia So (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapxboxpoints.com>, registered with HiChina Zhicheng Technology Limited.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2011; the National Arbitration Forum received payment on April 28, 2011. The Complaint was submitted in both Chinese and English.
On May 2, 2011, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <cheapxboxpoints.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 May 9, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 31, 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@cheapxboxpoints.com. Also on May 9, 2011, the Chinese language 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 June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheapxboxpoints.com> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <cheapxboxpoints.com> domain name.
3. Respondent registered and used the <cheapxboxpoints.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is the owner of numerous trademarks for its XBOX family of marks. Complainant submits evidence of its registration of the XBOX mark with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1,698,267 issued January 14, 2002) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 issued November 5, 2002). Complainant uses its XBOX mark in connection with video game entertainment systems, software, and accessories.
Respondent, Sophia c/o Phia So, registered the disputed domain name on February 16, 2011. The disputed domain name resolves to a commercial website that purports to sell codes for access to Complainant’s XBOX Live service. The resolving website prominently displays Complainant’s XBOX mark and logos.
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 rights in its XBOX mark based on its registrations of the mark with trademark authorities worldwide, including China’s SIPO (e.g., Reg. No. 1,698,267 issued January 14, 2002) and the USPTO (e.g., Reg. No. 2,646,465 issued November 5, 2002). The Panel finds that registration of its XBOX mark with governmental trademark authorities establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <cheapxboxpoints.com> domain name is confusingly similar to Complainant’s XBOX mark. The disputed domain name contains Complainant’s entire XBOX mark and merely adds the generic term “cheap” and the descriptive term “points,” which Complainant contends references its business of selling points with which members can purchase XBOX Live premium services. The Panel finds that the addition of two terms, either generic or descriptive, is not sufficient to distinguish the disputed domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Additionally, the disputed domain name contains the generic top-level domain (“gTLD”) “.com,” which the Panel finds is irrelevant to a Policy ¶ 4(a)(i) analysis. 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). Accordingly, the Panel finds that Respondent’s <cheapxboxpoints.com> domain name is confusingly similar to Complainant’s XBOX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), the Panel finds that Complainant has presented a prima facie case in support of the contention that Respondent lacks rights and legitimate interests in the <cheapxboxpoints.com> domain name. According to Policy ¶ 4(a)(ii), the burden now shifts to Respondent to come forward with affirmative evidence establishing its rights or legitimate interests in the 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.”). In defaulting, Respondent has failed to uphold its burden and has not supplied the Panel with any evidence that Respondent has any rights or legitimate interests in the disputed domain name. The Panel may infer that Respondent’s failure to respond indicates that the allegations made in the Complaint are in fact true. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, in its pursuit of fairness, the Panel elects to consider the evidence in its entirety in order to determine whether Respondent holds any rights or legitimate interests in the <cheapxboxpoints.com> domain name.
The WHOIS information for the disputed domain name identifies Respondent as “Sophia c/o Phia So.” Therefore, Complainant argues that Respondent is not commonly known by the disputed domain name. Additionally, Complainant avers that Respondent is not affiliated with Complainant in any way and that Respondent is not licensed by Complainant to use Complainant’s XBOX mark. Complainant further contends that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. The Panel finds that the evidence overwhelming leads to the conclusion that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the <cheapxboxpoints.com> domain name under Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s disputed domain name resolves to a commercial website that purports to sell codes for access to Complainant’s XBOX Live service. The Panel finds that Respondent’s use of the disputed domain name for such a purpose is not considered 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Additionally, Complainant asserts that Respondent’s resolving website prominently displays Complainant’s XBOX mark and logos and that no other indication of the source of the resolving website is provided other than Complainant’s registered XBOX mark. The Panel finds that Respondent is attempting to pass itself off as Complainant and that this is further evidence that Respondent is not making 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 Crow v. LOVEARTH.net, FA 203208 (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 . . . .”); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Although Complainant does not specifically argue it, the Panel finds that Respondent’s registration and use of the disputed domain name to purportedly sell access codes for Complainant’s XBOX Live service constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Complainant asserts that Respondent’s disputed domain name resolves to a commercial website from which Internet users can purportedly purchase access codes for Complainant’s XBOX Live services. The Panel finds that Respondent’s registration and use of the disputed domain name in order to profit from Internet users’ confusion as to Complainant’s sponsorship of, or affiliation with, the <cheapxboxpoints.com> domain name and resolving website is evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
The Panel has found that Respondent is attempting to pass itself off as Complainant through the prominent inclusion of Complainant’s XBOX mark and logos on the website resolving from the <cheapxboxpoints.com> domain name. The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <cheapxboxpoints.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 3, 2011
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