Microsoft Corporation v. Ellery c/o Shelley Tuck
Claim Number: FA1105001387471
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Shelley Tuck a/k/a Ellery c/o Shelley Tuck (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox360point.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 6, 2011. The Complaint was submitted in both the Chinese and English languages.
On May 9, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <xbox360point.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 13, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 2, 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@xbox360point.com. Also on May 13, 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 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <xbox360point.com> domain name is confusingly similar to Complainant’s XBOX 360 mark.
2. Respondent does not have any rights or legitimate interests in the <xbox360point.com> domain name.
3. Respondent registered and used the <xbox360point.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, began using its XBOX mark in 1998 in connection with television and video converters. In 2001, Complainant launched its XBOX brand of video game entertainment systems which later culminated in the introduction of the XBOX 360 gaming system in 2005. Complainant owns several trademark registrations for its XBOX 360 mark with the Chinese State Industrial Property Office (“SIPO”) (e.g., Reg. No. 4,778,228 issued April 21, 2009) and the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,300,210 issued September 25, 2007).
Respondent, Ellery c/o Shelley Tuck, registered the <xbox360point.com> domain name on June 9, 2010. Respondent’s disputed domain name resolves to a website that displays Complainant’s logos and trademark while purporting to sell Complainant’s gaming point card without authorization to do so.
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.
The Panel finds that Complainant has presented sufficient evidence to show that it has rights in the XBOX 360 mark under Policy ¶ 4(a)(i), through its trademark registrations with the SIPO (e.g., Reg. No. 4,778,228 issued April 21, 2009) and USPTO (e.g., Reg. No. 3,300,210 issued September 25, 2007). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to 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)).
Complainant argues that the <xbox360point.com> domain name is confusingly similar to Complainant’s XBOX 360 mark. Complainant notes that the domain name merely eliminates the space between the terms of the mark while adding the generic term “point” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any rights or legitimate interests in the <xbox360point.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that the WHOIS information for the disputed domain name identifies “Ellery c/o Shelley Tuck” as the registrant of the domain name, which it argues is not similar to the domain name. Further, Complainant alleges that Respondent is not affiliated with Complainant in any way, and that Respondent has not been licensed to sell its products or use its marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 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).
Further, Complainant submits evidence and arguments that Respondent’s domain name resolves to a commercial website that purports to sell codes for access to Complainant’s XBOX Live service. Complainant argues that this website is designed to appear to originate with Complainant as it prominently displays Complainant’s XBOX marks and logos with no indication that the products are not being sold by Complainant. Complainant asserts that such use of a confusingly similar domain name to pass oneself off as a trademark holder cannot be deemed a legitimate use. The Panel agrees and finds that Respondent is not using the disputed domain name for 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has presented evidence to show that Respondent’s disputed domain name resolves to a commercial website that purports to sell Complainant’s game point cards without authorization. Previous panels have determined that where a respondent is selling a complainant’s products without authorization, that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii), because such use inherently disrupts complainant’s business. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); 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.”). Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent is presumably profiting from its purported sales of the game points cards in question through the use of its confusingly similar domain name. Therefore, Complainant contends that Respondent registered and is using the domain name in bad faith by creating a distinct likelihood of confusion between its website and Complainant’s trademark registrations for commercial gain. The Panel agrees and finds that Respondent also registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <xbox360point.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 8, 2011
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