Microsoft Corporation v. David Baran c/o Dynadot Privacy
Claim Number: FA1307001509829
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is David Baran c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxdone.net>, registered with DYN ADOT, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 16, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <xboxdone.net> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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.net. Also on July 17, 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 August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant was founded in 1975 and is a worldwide leader in software and related services. Complainant first began using the XBOX mark in 2001 in connection with video game entertainment and associated software and accessories. Complainant has continued to use and advertise the XBOX mark internationally such that the mark is now famous.
Complainant owns the XBOX mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 registered November 5, 2002). Complainant also owns the XBOX mark through international trademark agencies, such as China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,698,267 registered January 14, 2002).
Respondent registered the disputed domain name on June 11, 2013.
The <xboxdone.net> domain name is confusingly similar to Complainant’s XBOX mark as the domain name incorporates the XBOX mark and adds only the generic top-level domain “gTLD” “.net” and the generic or descriptive term “done,” which is a typo of the number “one” that relates to the most recently announced XBOX product.
Respondent is not commonly known by Complainant’s XBOX mark. The WHOIS record identifies the registrant of the disputed domain as “David Baran c/o Dynadot Privacy.” Further, Complainant has not licensed or authorized Respondent’s use of the mark in any way. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The domain name redirects to multiple different websites, including an online gaming site called “Roblex” as well as to a site for a game called “Soldier Front 2.”
Respondent’s promotion of third-party goods reveals bad faith as it disrupts Complainant’s business. Respondent has attempted to commercially benefit, from the goodwill associated with the XBOX mark, showing Respondent’s bad faith. Respondent presumably receives some type of compensation from its promotion of third party products. Respondent registered the disputed domain in bad faith as Respondent had knowledge of Complainant’s rights in the XBOX mark. Respondent also registered the disputed domain within a couple of weeks after XBOX ONE was announced. This also reflects opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns registered trademarks for XBOX in the United States, China, and elsewhere throughout the world.
Respondent is not affiliated with Complainant and had not been authorized to use the XBOX mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in XBOX.
The <xboxdone.com> domain name addresses a website that displays hyperlinks to Complainant’s competition as well as to other third-party websites.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns USPTO trademark registrations for the XBOX mark in conjunction with its business of selling video game hardware and software. Complainant has also registered the XBOX mark in China and elsewhere. Registration of the XBOX mark with one or more national trademark registrars is compelling evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The domain name incorporates Complainant’s entire XBOX mark, adds only the generic or descriptive term “done” and appends the generic top-level domain “.net” to the resulting string. The addition of a top-level domain name is irrelevant to the Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Further, the generic term “done” can be interpreted as a typo of the number “one,” which relates to the most recently announced XBOX product, XBOX ONE. Whether or not “done” is considered a generic term or a mistyped variant of ONE, the Panel finds its addition does not sufficiently differentiate the domain name from the Complainant mark for the purposes of the Policy. Therefore, the Panel finds that the <xboxdone.net> domain name is confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i). 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)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “David Baran c/o Dynadot Privacy” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Furthermore, the domain name redirects to multiple websites including an online gaming site called “Roblex” as well as to a site for a game called “Soldier Front 2.” It is no great leap to conclude that Respondent intends to receive pay-per-click compensation via the linked webpages. Using a confusingly similar domain name to address a webpage that directs users to third-party sites and products 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the confusingly similar domain name to provide links to Complainant’s competitors. As mentioned above, Internet users navigating to the at-issue domain name are redirects to multiple websites, including an online gaming site called “Roblex” as well as to a site for a game called “Soldier Front .” Because it disrupts Complainant’s business Respondent’s use of the domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent attempts to commercially benefit from the goodwill associated with Complainant’s XBOX mark. As discussed above, Respondent’s confusingly similar <xboxdone.net> webpage redirects visitors who may be attempting to reach Complainant to multiple Respondent controlled websites that are neither endorsed nor sponsored by Complainant. Respondent ultimately receives, or intends to receive, compensation via click through fees when a visitor clicks on one or more of the links displayed on such websites. This use of the domain name demonstrates bad faith under Policy ¶4(a)(iv). See 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).
Furthermore, there is evidence suggesting opportunistic bad faith on the part of Respondent since Respondent registered the disputed domain name within a couple of weeks after Complainant announced its new XBOX ONE product, an announcement that received widespread mainstream news coverage. See 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.”).
Finally, Respondent had knowledge of Complainant’s rights in the XBOX mark prior to registering the <xboxdone.net> domain name. Such prior knowledge is apparent because of the notoriety of Complainant’s XBOX mark and because as mentioned above Respondent registered the domain within a couple of weeks after the public announcement of Complainant’s XBOX ONE gaming platform. Respondent’s prior knowledge of Complainant’s trademark rights in the confusingly similar at-issue domain name shows bad faith under Policy ¶ 4(a)(iii). See 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 <xboxdone.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 14, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page