Microsoft Corporation v. PRQ Inet KB / Gottfrid Swartholm
Claim Number: FA1206001450976
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is PRQ Inet KB / Gottfrid Swartholm (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxliverewards.com>, registered with eNom.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 28, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <xboxliverewards.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@xboxliverewards.com. Also on June 29, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a worldwide leader in software and services. Complainant has rights in the XBOX LIVE mark, which it uses in connection with a video game entertainment system and related goods and services. Complainant is the owner of trademark registrations for the XBOX LIVE mark (e.g., Reg. No. 2,902,268 registered November 9, 2004) with the United States Patent and Trademark Office (“USPTO”). Respondent, PRQ Inet KB / Gottfrid Swartholm, registered the <xboxliverewards.com> domain name on March 27, 2012.
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.
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.”).
Complainant has rights in the XBOX LIVE mark based on its ownership of USPTO trademark registrations for the XBOX LIVE mark (e.g., Reg. No. 2,902,268 registered November 9, 2004). The registration of a mark with a trademark authority, regardless of the location of the parties, is evidence of rights in the 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)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the XBOX LIVE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <xboxliverewards.com> domain name is confusingly similar to the XBOX LIVE mark. Respondent’s addition of the descriptive term “rewards” and the generic top-level domain (“gTLD”) “.com” fails to distinguish the <xboxliverewards.com> domain name from the XBOX LIVE mark. The addition of a term that describes the complainant’s business is not sufficient to distinguish the disputed domain name from the complainant’s 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). The disputed domain name is confusingly similar despite the addition of a gTLD. 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 <xboxliverewards.com> domain name is confusingly similar to the XBOX LIVE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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).
Complainant asserts that Respondent is not commonly known by the <xboxliverewards.com> domain name. Respondent is not licensed to use the XBOX LIVE mark and is not an authorized vendor, supplier, or distributor of XBOX LIVE products. Additionally, the WHOIS record for the <xboxliverewards.com> domain name lists “PRQ Inet KB / Gottfrid Swartholm” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <xboxliverewards.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next alleges that the <xboxliverewards.com> domain name’s use is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. The <xboxliverewards.com> domain name resolves to a website that operates an XBOX LIVE rewards program in competition with the rewards program Complainant operates for the XBOX LIVE system. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (the operation of a competing website on a confusingly similar domain name is not a use which provides the respondent with protection from an unfavorable UDRP finding under Policy ¶¶ 4(c)(i) and 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <xboxliverewards.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and is using the <xboxliverewards.com> domain name in bad faith. The disputed domain name resolves to a website that operates a competing XBOX LIVE rewards program. The operation of a competing business with a disputed domain name is disruptive. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that the <xboxliverewards.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent attempted, for commercial gain, to attract Internet users to the <xboxliverewards.com> domain name by creating a likelihood of confusion as to the source of the <xboxliverewards.com> domain name. The disputed domain name resolves to a website that operates a loyalty rewards program in competition with the one that Complainant offers. Respondent operates this rewards program to confuse Internet users and, presumably, to gain a monetary benefit. Therefore, the Panel finds that Respondent registered and is using the <xboxliverewards.com> domain name in a bad faith attempt to commercially gain from Internet users’ mistakes under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent’s bad faith is not mitigated by the inclusion of a vague disclaimer on the <xboxliverewards.com> domain name. After receiving the notice of Complainant’s demand, Respondent added the word “Unofficial” to its website heading (stating in relevant part, “XboxLiveRewards.com – Earn Microsoft® Points (Unofficial)) and added the statement, “We are non-profit to maximize the amount of points we can give you!” Panels have found that the use of a disclaimer does not mitigate bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Therefore, the Panel finds that Respondent registered and is using the <xboxliverewards.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent had actual knowledge of Complainant's rights in the XBOX LIVE mark when Respondent registered the disputed domain name. Therefore, the Panel finds that Respondent registered the <xboxliverewards.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxliverewards.com> domain name be TRANSFERRED.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 13, 2012
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