Microsoft Corporation v. Peter McCarthy / tsflea@gmail.com
Claim Number: FA1306001504406
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Peter McCarthy / tsflea@gmail.com (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxdone.org>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013.
On June 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xboxdone.org> 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 June 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@xboxdone.org. Also on June 14, 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 July 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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’s
a. Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
i. Complainant uses the XBOX mark to promote and sell a video game console and related software and accessories. Complainant recently announced its “Xbox One” video game console, which shall replace its existing “Xbox 360” console. Complainant has registered the XBOX mark with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 2,646,465 registered on Nov. 5, 2002.
ii. Respondent’s <xboxdone.org> domain name simply adds the term “done” to the XBOX mark. Generic top-level domains (“gTLDs”) such as “.org” are irrelevant.
b. Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
iii. Respondent is known as “Peter McCarthy / tsflea@gmail.com.” Complainant has never authorized or licensed an individual such as Respondent to use the XBOX mark.
iv. Respondent is using the <xboxdone.org> domain name to shuttle Internet users to an <amazon.com> search page that promotes the pre-ordering of the competing Playstation 4 video game system.
c. Policy ¶ 4(a)(iii): Respondent’s Bad Faith
v. Respondent’s use of the domain name to shuttle Internet users to a major competitor’s products is evidence of a bad faith attempt to disrupt Complainant’s business.
vi. Respondent seeks to commercially benefit unfairly by using the XBOX mark to send Internet users to a website wherein they are directed to pre-order a competing product.
vii. Respondent’s registration of this domain name less than 3 weeks after the launch of Complainant’s “XBOX One” marketing initiative is evidence of opportunistic bad faith.
viii. Respondent had actual knowledge of Complainant’s mark. The domain name reflects a play on words of the “Xbox One” product that Complainant is developing, and the domain name’s sole purpose is to redirect Internet users to Respondent’s primary market competitor.
B. Respondent did not submit a Response.
1. Respondent’s <xboxdone.org> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the < <xboxdone.org> domain name.
3. Respondent registered or used the <xboxdone.org> 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 claims that it uses the XBOX mark to promote and sell a video game console and related software and accessories. Complainant states that it recently announced its “Xbox One” video game console, which shall replace its existing “Xbox 360” console when it is released in commerce. See Complainant’s Ex. D. Complainant alleges that it has registered the XBOX mark with the USPTO. See Reg. No. 2,646,465 registered on Nov. 5, 2002. The Panel agrees that USPTO registration is a prudent showing of Policy ¶ 4(a)(i) rights in the mark as both parties dwell within the United States. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the XBOX mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <xboxdone.org> domain name simply adds the term “done” to the XBOX mark. Complainant argues that gTLDs such as “.org” are irrelevant. The Panel agrees that gTLDs are trivial. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel also agrees that adding the generic term “done” to the XBOX mark is insufficient to distinguish this domain name from the mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel concludes that the <xboxdone.org> domain name is confusingly similar to the 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 notes that Respondent is known as “Peter McCarthy / tsflea@gmail.com” in the WHOIS record. Complainant claims that it has never authorized or licensed an individual such as Respondent to use the XBOX mark. The Panel agrees that there is nothing in the record to allow a Policy ¶ 4(c)(ii) finding that Respondent is commonly known by the <xboxdone.org> domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the <xboxdone.org> domain name to shuttle Internet users to an <amazon.com> search page that promotes the pre-ordering of the competing Playstation 4 video game system. The Panel notes that the record contains an image of the domain name’s purported destination, an <amazon.com> website page where the term “playstation 4” has been entered into the search bar, with relevant results displayed. See Complainant’s Ex. F. The Panel agrees this is the destination website for the <xboxdone.org> domain name, and finds that Respondent lacks any rights and legitimate interests as the domain name is not used for either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in employing this domain name for purposes of promoting Complainant’s primary market competitor. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant argues that Respondent’s use of the domain name to shuttle Internet users to a major competitor’s products is evidence of a bad faith attempt to disrupt Complainant’s business. The Panel notes that the domain name’s evident purpose is to send Internet users to an Amazon webpage wherein they may make a pre-order purchase for the competing “Playstation 4” system and several of its slated launch games. See Complainant’s Ex. F. The Panel concludes that Respondent seeks to disrupt Complainant’s XBOX business in bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant next states that Respondent seeks to commercially benefit unfairly by using the XBOX mark to send Internet users to a website wherein they are directed to pre-order a competing product. In Gardens Alive, Inc. v. D&S Linx, it was determined that Policy ¶ 4(b)(iv) bad faith through confusion of Internet users is evident when a domain name is employed to shuttle the users to websites that tout competing goods. See FA 203126 (Nat. Arb. Forum Nov. 20, 2003). The Panel agrees that the same is true here and that Respondent’s use of the domain name to promote Playstation 4 by promoting an Amazon.com website page for Playstaion pre-orders is evidence of Policy ¶ 4(b)(iv) bad faith.
Complainant argues that Respondent’s registration of this <xboxdone.org> domain name less than 3 weeks after the launch of Complainant’s “XBOX One” marketing initiative is evidence of opportunistic bad faith. Previous panels have typically found opportunistic bad faith to exist when a respondent registers a domain name within an incredibly short frame from a product announcement, or otherwise revealing of a new trademark or service. See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”). The Panel believes Respondent acted in such a timely manner to infringe on Complainant’s planned “Xbox One” product name, and finds opportunistic bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark. Complainant bases this conclusion on both the fact that the domain name reflects a play on words of the “Xbox One” product that Complainant is developing, and the fact that the domain name’s sole purpose is to redirect Internet users to Respondent’s primary market competitor. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and conclude that Respondent registered the <xboxdone.org> 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).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxdone.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 22, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page