Microsoft Corporation v. Haiyue Tang
Claim Number: FA1206001446970
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Haiyue Tang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xboxsmartglass.com> and <windowsphonebar.com>, registered with Godaddy.Com, Llc.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2012; the National Arbitration Forum received payment on June 4, 2012.
On June 4, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <xboxsmartglass.com> and <windowsphonebar.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 June 5, 2012, the Forum sent the Complainant a Deficiency Letter, and the Complainant accordingly submitted an Amended Complaint on June 7, 2012.
On June 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2012 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@xboxsmartglass.com and postmaster@windowsphonebar.com. Also on June 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on June 28, 2012.
The Respondent also communicated via e-mail to the Forum on June 26, 2012, shortly stating that the Respondent is not the holder of <windowsphonebar.com>.
A timely Additional Submission was received from Complainant on July 2, 2012.
On July 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, founded in 1975, claims to be a worldwide leader in software, services, and solutions that help people and business realize their full potential.
Complainant started to use the XBOX trademark in 1998 and as of January, 2012, Complainant had sold more than 66 million XBOX 360 consoles and had nearly 40 million Xbox LIVE members. Complainant delivers information and services relating to XBOX via its web sites, including <xbox.com>.
Complainant claims to have registered the XBOX trademark within the USPTO and around the world, including in China where Respondent purportedly resides.
Complainant states that the same day the disputed domain name <xboxsmartglass.com> was registered, there were rumours in the media that the Complainant was going to be presenting a new device called XBOX SMART GLASS (samples of these “rumours” / discussion, provided by Exhibit D of the Complaint).
Complainant has used the trademark WINDOWS continuously since early 1983, and claims that WINDOWS has become well-known and the world’s most popular computer operating platform for desktop and laptop computers.
According to Complainant, the <xboxsmartglass.com> is confusingly similar to Complainant’s XBOX trademark because it incorporates the trademark in its entirety, adding only the terms “smart glass” which correspond with the rumored name of Complainant’s latest XBOX product, along with the generic top-level domain (“gTLD”), “.com.” As to <windowsphonebar.com> it is confusingly similar to Complainant’s WINDOWS trademark, as it incorporates the WINDOWS mark in its entirety and merely adds the generic terms “phone” and “bar” and the most common gTLD, “.com.”
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by these names, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate non-commercial or fair use.
Finally, Complainant argues that Respondent has registered and used <xboxsmartglass.com> and <windowsphonebar.com> in bad faith. At the time of registration, Complainant’s trademarks XBOX and WINDOWS were familiar to countless consumers around the world. It is clear that Respondent registered the disputed domain names with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services, then using them in connection with revenue-generating websites showing intent to mislead or confuse consumers as to the source or affiliation of the websites and disrupts Complainant’s business.
B. Respondent
Respondent argues that Complainant has no rights to XBOXSMARTGLASS, as the Complainant has not registered XBOXSMARTGLASS as a trademark. Further, Respondent points out that XBOX is only registered in classes 9, 25, 28 and 41 in China, and the disputed domain name <xboxsmartglass.com> is not used in any of these classes, so there is no likelihood of confusion.
Respondent states that <xboxsmartglass.com> was legally registered on June 2, 2012, as XBOXSMARTGLASS was released on June 4, 2012 and Respondent had no knowledge of Complainant’s plans to release a product with that name on the date the disputed domain name was registered.
Respondent asserts that Respondent never wanted to sell, rent, or otherwise transfer <xboxsmartglass.com> to Complainant, or to a competitor of Complainant, for a valuable consideration in excess of documented out-of-pocket costs directly related to <xboxsmartglass.com>.
Finally, Respondent states that there is a legal proceeding at the Guangzhou Tianhe District People’s Court, Guangdong Province, China, relating to the disputed domain name <xboxsmartglass.com>.
C. Additional Submissions
Complainant
On July 2, 2012, Complainant filed an Additional Submission, stating that:
a) Complainant has rights in the XBOX mark and does not need rights in the XBOXSMARTGLASS mark;
b) The <xboxsmartglass.com> domain name is confusingly similar to the XBOX mark;
c) The <xboxsmartglass.com> and <windowsphonebar.com> domain names are used to collect click-through revenues for Respondent’s commercial gain;
d) The <xboxsmartglass.com> domain name was registered on the same day that Complainant announced the launch of Xbox Smart Glass products in opportunistic bad faith;
e) Respondent has not provided any information related to the alleged legal proceedings commenced in China and the Panel should therefore proceed with a decision.
Trademarks and Disputed Domain Names
Complainant is the owner of a number of registered trademarks for XBOX and related marks, as well as for WINDOWS, such as
US No. 2,646,465 XBOX (registered November 5, 2002)
US No. 2,663,880 XBOX (registered December 17, 2002)
US No. 2,817,709 XBOX (registered February 24, 2004)
US No. 2,698,179 XBOX (registered March 18, 2003)
US No. 2,902,268 XBOX LIVE (registered November 9, 2004)
US No. 2,940,682 XBOX LIVE (registered April 12, 2005)
US No. 2,940,679 XBOX LIVE (registered April 12, 2005)
US No. 1,872,264 WINDOWS (registered January 10, 1995)
(Copies of the Certificate of Registrations provided by Exhibits C and F)
The disputed domain name <windowsphonebar.com> was registered on May 23, 2012, and the disputed domain name <xboxsmartglass.com> was registered on June 1, 2012, both in the name of Respondent.
In his informal e-mail note to the Forum on June 26, 2012, Respondent denies being the holder of <windowsphonebar.com>. However, the Panel, studying the WHOIS information provided by Complainant and further confirmed by the Registrar, finds no reason to make any other conclusion than the one that Respondent - as identified in this proceeding - is the holder of both disputed domain names.
Procedural Issue: Concurrent Court Proceedings
In its Response, Respondent notes that there is a legal proceeding in Guangdong Province, China, in the Guangzhou Tianhe District People’s Court pending relating to the <xboxsmartglass.com> domain name. Respondent does not attach copies of the court documents as evidence of this proceeding. In its Additional Submission, Complainant states that neither itself nor its counsel have been notified of any such proceeding. Additionally, Complainant asserts that it sent e-mails to Respondent’s counsel on June 28, 2012 and June 29, 2012, requesting copies of the documents, but Respondent has failed to produce the documents.
In accordance with Rule 18(a), the Panel has the discretion to decide whether to proceed to a decision or to suspend or terminate the proceedings in the event that other legal proceedings “in respect of a domain-name dispute that is the subject of the complaint” is initiated during the pendency of the UDRP proceedings.
Without any more than an allegation that it has initiated a legal proceeding that relates to one of the domain names in this action, the Panel concludes that Respondent has failed to establish that such other legal proceeding exists.
Thus, the Panel decides to proceed with a decision as it has the discretion to do so even if there was such a legal proceeding on file. See Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
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."
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 rights in the XBOX and WINDOWS marks, and has provided the Panel with evidence of the USPTO registrations for the XBOX mark (e.g., Reg. No. 2,646,465 registered November 5, 2002) and for the WINDOWS mark (e.g., Reg. No. 1,872,264 registered January 10, 1995). Complainant has also provided the Panel with evidence of its SAIC registrations for the XBOX mark (e.g., Reg. No. 1,698,267 registered January 14, 2002), and for the WINDOWS mark (e.g., Reg. No. 673,453 registered January 14, 1994).
As found in previous cases, registration of a trademark is evidence of rights in a mark. See 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)). Therefore, the Panel find that Complainant has rights in the XBOX and WINDOWS marks under Policy ¶ 4(a)(i).
Complainant asserts that the <xboxsmartglass.com> domain name is confusingly similar to the XBOX mark. In its Additional Submission, the Complainant disputes Respondent’s claim that it needs rights in the XBOXSMARTGLASS mark seeing as it has rights in the XBOX mark and the <xboxsmartglass.com> domain name is confusingly similar to the XBOX mark. Complainant notes that there was public notice of the SMART GLASS goods being used in connection with the XBOX mark as early as June 1, 2012, for which Complainant provides evidence. The Panel finds that Respondent’s addition of the descriptive terms “smart” and “glass” fails to differentiate the <xboxsmartglass.com> domain name from the XBOX mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Complainant alleges that the <windowsphonebar.com> domain name is confusingly similar to the WINDOWS mark. The Panel finds that Respondent’s addition of the generic terms “phone” and “bar” to Complainant’s mark in the disputed domain name does not negate a finding of confusing similarity. 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)).
The Panel also finds that Respondent’s addition of the gTLD “.com” 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).
Therefore, the Panel finds that Respondent’s <windowsphonebar.com> and <xboxsmartglass.com> domain names are confusingly similar to the WINDOWS and XBOX trademarks under Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <xboxsmartglass.com> and <windowsphonebar.com> domain names. Complainant contends that Respondent is not licensed to use Complainant’s marks and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Additionally, Complainant argues that the WHOIS record lists “Haiyue Tang” as the domain names registrant.
Lack of authorization to use a mark in combination with an unsupportive WHOIS record may well be evidence that a respondent is not commonly known by the disputed domain name. 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).
Further, there is nothing in Respondent’s Response that contradicts Complainant’s arguments in this respect.
Accordingly, the Panel finds that Respondent is not commonly known by the <xboxsmartglass.com> and <windowsphonebar.com> domain names under Policy ¶ 4(c)(ii).
Both the disputed domain names are parked at sites where Respondent obviously receives click through revenues from links to sites that relate to third party products. The use of the disputed domain names at parked sites with revenue generating links is not a bona fide offering of goods or services or a legitimate non-commercial use. See Microsoft Corporation v. 500 Cars Ltd., FA 1387776 (Nat. Arb. Forum, June 9, 2011) (finding that where Respondent’s disputed domain name resolved to its own commercial website where it sold automobile and vehicle products and services unrelated to Complainant’s business was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the <microsoftcarservice.com> domain name).
The Panel finds that Respondent’s use of the <xboxsmartglass.com> and <windowsphonebar.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
For all the above reasons, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domains.
Complainant is a company based in United States of America, whereas Respondent is located in China.
However, Complainant’s trademarks XBOX and WINDOWS are both registered and well-known worldwide, including the home country of Respondent.
As shown by Complainant, the <windowsphonebar.com> domain name resolves to a parked website displaying goods and services to both competing and noncompeting businesses under headings such as “$189 Replacement Windows” and “Online Programs for MSN”.
The Panel concludes that Respondent has attempted to create confusion as to Complainant’s affiliation with the <windowsphonebar.com> domain name in order to profit from this confusion, being evidence of bad faith under 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 screenshots of the <xboxsmartglass.com> domain name on the other hand demonstrate that all of the links displayed are unrelated to Complainant.
However, said disputed domain name was registered by Respondent on the very day that the press published rumors about Complainant’s newest product, which to this Panel clearly indicates that Respondent had Complainant’s trademark and new product in mind and wanted to take unfair advantage of the fame of Complainant’s trademarks and the risk that customers looking for Complainant’s new products would mistakenly go to Respondent’s site instead. This is clearly shows Respondent’s bad faith. See Microsoft Corp. v. Brian Fisher, FA 1436075 (Nat. Arb. Forum, May 4, 2012) (finding that Respondent registered the domain name within days of a press announcement relating to the product for which the domain name is based, combined with the fact that he registered another domain name that included a Microsoft trademark established bad faith under Policy ¶ 4(a)(iii)), see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Thus, the Panel concludes that the disputed domain names were registered and used in bad faith, and that Complainant has succeeded in proving the three elements within Policy ¶ 4(a).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxsmartglass.com> and <windowsphonebar.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 19, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page