Microsoft Corporation v. QUHO Publicidad
Claim Number: FA1302001484290
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is QUHO Publicidad (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxmexico.com>, registered with GODADDY.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2013; the National Arbitration Forum received payment on February 8, 2013.
On February 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <xboxmexico.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 February 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2013 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@xboxmexico.com. Also on February 11, 2013, 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 March 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent is not commonly known by Complainant’s XBOX mark.
ii. Respondent’s site promotes goods and services sold by unrelated companies.
iii. Respondent’s use of Complainant’s trademarks is calculated and likely to lead visitors to believe that this site originates with or is endorsed by Complainant or may be the official XBOX MEXICO site. This constitutes passing off.
i. Respondent is also using the disputed domain name to disrupt the business of Complainant.
ii. Respondent is creating the false impression of a site that originates with or is sponsored by Complainant.
iii. Respondent registered the disputed domain name with knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its XBOX mark.
2. Respondent’s <xboxmexico.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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, Microsoft Corporation, argues that it is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant contends that it is the owner of the world famous trademark XBOX. Complainant began using XBOX in connection with TV and video converters. Complainant claims that in 2001, it launched video game entertainment systems, software, and accessories under the XBOX brand. Complainant claims that it delivers information and services relating to XBOX via its websites, including <xbox.com>. Complainant asserts that it is the owner of trademark registrations with the USPTO for the XBOX mark (e.g., Reg. No. 2,646,465, registered November 5, 2002). See Complainant’s Exhibit D. Complainant also contends that it owns trademark registrations with the MIIP for the XBOX mark (e.g., Reg. No. 735,257, registered June 23, 2000). See Complainant’s Exhibit D. The Panel holds that Complainant’s registration of the XBOX mark with the USPTO and MIIP are sufficient to establish its rights in the XBOX mark under Policy ¶ 4(a)(i). See Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Nat. Arb. Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <xboxmexico.com> domain name is confusingly similar to Complainant’s XBOX mark as it incorporates the XBOX trademark in its entirety, adding only the geographic term “Mexico.” The Panel determines that the addition of a geographic term does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Complainant asserts that Respondent adds the gTLD “.com” to the disputed domain name. In Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007), the panel found that the addition of a gTLD does not eliminate confusing similarity, as a top-level domain is a requirement for all domain names. Therefore, the Panel finds that Respondent’s <xboxmexico.com> domain name is confusingly similar to Complainant’s XBOX 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); 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 argues that Respondent is not commonly known by Complainant’s XBOX mark. Complainant contends that the WHOIS information for the disputed domain name currently identifies Respondent as “QUHO Publicidad” as the registrant. See Complainant’s Exhibit A. Complainant claims that Respondent is not affiliated with Complainant in any way. Complainant asserts that Respondent is not licensed by Complainant to use Complainant’s XBOX mark. Complainant argues that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. The Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s site promotes goods and services sold by unrelated companies. Complainant claims that Respondent’s use of Complainant’s trademarks is calculated and likely to lead visitors to believe that this site originates with or is endorsed by Complainant or may be the official XBOX MEXICO site. Complainant contends that the landing page for the disputed domain name displays the words XBOX MEXICO in bold letters with the XBOX 360 name and logo below those words. See Complainant’s Exhibit E. Complainant claims that Respondent’s link displays different things like links for trips to Cancun, cab service to Cancun, and others. See Complainant’s Exhibit E. Complainant argues that Respondent presumably receives revenues for any referrals to the third party sites when a computer user clicks on the links. Complainant argues that Respondent’s use of the disputed domain name constitutes passing off. Prior panels have determined that respondent’s attempt to pass itself off 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 under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006). Accordingly, the Panel concludes that Respondent’s use of the <xboxmexico.com> domain name to pass itself off as Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent is also using the disputed domain name to disrupt the business of Complainant. Complainant asserts that consumers looking for Complainant’s products marketed under the XBOX trademark are likely to go to the disputed domain name believing that they are at Complainant’s website and would be surprised to find information and links to other products and services like trips to Cancun and taxi cab services. Consequently, the Panel finds that Respondent’s disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Complainant contends that Respondent is creating the false impression of a site that originates with or is sponsored by Complainant. Complainant contends that the landing page for the disputed domain name displays the words XBOX MEXICO in bold letters with the XBOX 360 name and logo below those words. See Complainant’s Exhibit E. Complainant argues that Respondent presumably receives revenues for any referrals to the third party sites when a computer user clicks on the links. The Panel finds that Respondent’s attempt to pass itself off as Complainant evidences bad faith use and registration of the disputed domain name under Policy ¶ 4(b)(iv). See 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”).
Complainant asserts that Respondent registered the disputed domain name with knowledge of Complainant’s rights. Complainant argues that at the time Respondent registered the disputed domain name, Complainant’s XBOX mark was famous and familiar to countless consumers around the world. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxmexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 28, 2013
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