Microsoft Corporation v. DAINA TRADING COMPANY LIMITED
Claim Number: FA1312001533432
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is DAINA TRADING COMPANY LIMITED (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msnonline.com>, <msne.com>, and <msnd.com>, registered with Domain.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013.
On December 6, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msnonline.com>, <msne.com>, and <msnd.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 December 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@xboxentertainment.com, postmaster@www-xbox.com, postmaster@msntoday.com, postmaster@msnonline.com, postmaster@msne.com, and postmaster@msnd.com. Also on December 6, 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 December 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.
XBOX®
Microsoft is the owner of numerous proprietary trademarks for its goods and services, including the world famous trademark XBOX®. Microsoft launched the XBOX video game entertainment system, along with associated software and accessories, in 2001. In 2002, Microsoft introduced XBOX LIVE® which allows consumers to play XBOX games against other online players, among other benefits. In 2005, Microsoft introduced its second generation gaming console and platform under the trademark XBOX 360®. Microsoft delivers information and services relating to XBOX via its web sites, including <xbox.com>. As of April, 2013, Microsoft had sold more than 77 million XBOX 360 consoles and had more than 46 million Xbox LIVE members.
Prior ICANN panelists have found that XBOX is a well-known or famous mark. See Microsoft Corp. v. ABK, FA 1473573 (Nat. Arb. Forum Jan 21, 2013)(“Complainant’s XBOX and XBOX LIVE marks were, and are, famous and familiar to countless consumers”); Microsoft Corp. v. Shiguo, FA 1445087 (Nat Arb. Forum July 5, 2012)(noting that XBOX is a “well-known” mark); Microsoft Corp. v. domain for sale etvtelevision @ hotmal.com 111.221.444, Case No. D2003-0938 (WIPO March 1, 2004)(finding bad faith based in part on the “famous nature” of the XBOX mark); Microsoft Corp. v. Zuopan, FA 1447775 (Nat. Arb. Forum July 13, 2012)(noting that the XBOX mark is “well renowned”); and Microsoft Corp. v. Phayze Inc., Case No. D2003-0750 (WIPO Nov. 13, 2003)(“the XBOX mark is well known worldwide”).
Microsoft has registered the XBOX trademarks with the United States Patent and Trademark Office and around the world. These registrations were applied for and issued well prior to the registration dates for <xboxentertainment.com> and <www-xbox.com>.
MSN®
Microsoft began using the MSN trademark at least as early as 1995, and has used the trademark continuously since then. Among other things, Microsoft operates the MSN® portal which provides an Internet search engine, as well as services such as news, photos, videos, and information on travel, entertainment, autos and other topics of interest to users.
MSN, together with its companion sites Bing and Windows Live, is among the top brands and most frequently visited sites on the Internet.
Prior ICANN panelists have found that MSN is a well-known and world famous mark. See, e.g., Microsoft Corp. v. World Media Service, FA 1254446 (Nat. Arb. Forum May 11, 2009); Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818 (2000); Microsoft Corp. v. Stop2Shop a/k/a Gene Vozzola, WIPO Case No. D2004-0510 (2004); Microsoft Corp. v. Marine Safety Network Weather, FA655480 (Nat. Arb. Forum April 26, 2006); Microsoft Corp. v. Kaufman, NAF Case No. FA 1213955 (Nat. Arb. Forum 2008); and Microsoft Corp. v. Karabidek, DMD2010-0003 (WIPO October 28, 2010)(recognizing the “fame and substantial reputation in the [MSN] mark”).
The MSN trademark is registered in the United States and around the world. See also Microsoft Corp. v. Kaufman, FA 1213955 (Nat. Arb. Forum 2008)(finding that Complainant’s MSN mark is known throughout the world and is registered with other governmental trademark authorities worldwide). Microsoft used the trademark MSN long prior to the registration dates for <msnonline.com>, <msntoday.com>, <msnd.com> and <msne.com>.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAMES (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names <xboxentertainment.com. and <www-xbox.com> are confusingly similar to Complainant’s famous, registered XBOX trademark.
The disputed domains incorporates the XBOX trademark in its entirety, adding only the generic or descriptive term “entertainment” or “www” followed by the most common generic top level domain “.com.”
These changes are not sufficient to distinguish the disputed domain name from the well-known and highly distinctive XBOX trademark. See Microsoft Corp. v. Juan, FA1205001445083 (Nat. Arb. Forum June 27, 2012)(finding <xbox8.org>, <xboxcompanion.com>, <xboxlivetv.com>, <xboxphone.com>, and <xboxtablet.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. Bingo Holdings c/o Wang, FA1005001324672 (Nat. Arb. Forum June 18, 2010)(finding <xboxonline.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. Benson, FA1104001384468 (Nat. Arb. Forum May 24, 2011)(finding <xboxstore.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. BJK c/o YILMAZ, FA1207001452490 (Nat. Arb. Forum Aug. 8, 2012)(finding <xboxvideo.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. Shiguo, FA1205001445087 (Nat. Arb. Forum July 4, 2012)(finding <xboxmusic.com> confusingly similar to XBOX and awarding transfer); Autozone Parts, Inc. v. S.H. Inc., FA 1274396 (Nat. Arb. Forum, Sept. 3, 2009) (finding that the addition of www and a hyphen did not differentiate <www-autozone.com> from the AUTOZONE trademark); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Plainly, Respondent’s domain names <xboxentertainment.com> and <www-xbox.com> are confusingly similar to Complainant’s famous XBOX trademark.
The disputed domain names <msnonline.com>, <msntoday.com>, <msnd.com> and <msne.com> are also confusingly similar to Complainant’s famous, registered MSN trademark.
Respondent’s domain names incorporates Complainant’s MSN mark in its entirety, adding only the generic words “online,” “today,” or the single initials “d” or “e” and the generic TLD .com.
The addition of a generic term or a single letter to Complainant’s distinctive and famous mark is insufficient to distinguish Respondent’s domain name. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA 1059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); Microsoft Corporation v. li zi, FA 1382743 (Nat. Arb. Forum, May 24, 2011) (finding <xboxpointsonline.com> and <xboxpoints-online.com> confusingly similar to the XBOX trademark). See also Microsoft Corp. v. Fong et al. FA0906001265720 (Nat. Arb. Forum July 14, 2009)(finding <msnphoto.com> confusingly similar to MSN and noting, “[t]he Panel finds the additions of generic or descriptive terms relating to Complainant’s business … fail to distinguish the disputed domain names from Complainant’s MSN mark pursuant to Policy ¶4(a)(i)”); Microsoft Corp. v. Dalton, FA0607000747780 (Nat. Arb. Forum August 23, 2006)(finding <searchmsn.com> confusingly similar to Complainant’s MSN mark and noting that “the mere addition of a term describing Complainant’s business does nothing to differentiate the disputed domain name from Complainant’s registered MSN mark”); Microsoft Corp. v. Teammsn, FA 648204 (Nat. Arb. Forum March 27, 2006)(finding <teammsn.com> confusingly similar to MSN because it incorporated Complainant’s mark in its entirety along with a descriptive term and a top-level domain); W.W. Grainger Inc. v. ICS, Inc., FA 1478522 (Nat. Arb. Forum, Feb. 14, 2013 (finding that the added letter “m” to the GRAINGER mark did not distinguish the domain name); Vodafone Group PLC v. Nagata, D2005-0077 (WIPO March 30, 2005)(finding <vodafone-user.net> confusingly similar to VODAFONE and awarding transfer); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Plainly, Respondent’s domain names <msnonline.com>, <msntoday.com>, <msnd.com> and <msne.com> are confusingly similar to Complainant’s famous MSN trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAMES (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s XBOX or MSN marks, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Daina Trading Company Limited. Respondent is not commonly known by Complainant’s XBOX or MSN marks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s XBOX or MSN marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
With the exception of <msnonline.com> which goes to a blank page, Respondent uses the disputed domain names in connection with sites that display links related to Complainant’s XBOX or MSN products and services and which also contain links to products and services of third parties that are either competitors of Complainant or unrelated to Complainant.
Using Complainant’s XBOX and MSN trademark to promote third party products does not establish rights or legitimate interests in the disputed domain name. Respondent has used all of the domains except <msnonline.com> for pay-per-click sites which, among other things, promotes products and services that directly compete with Complainant’s services. Id. Seeking to attract traffic and revenue using Complainant’s famous trademarks, and providing promoting competing goods and services, does not reflect a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012)(finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Florists' Transworld Delivery v. Malek, FA0604000676433 (Nat. Arb. Forum June 6, 2006)(finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”);Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum Jan. 10, 2007)(“Respondent’s … domain name resolves to a website featuring links to third-party websites in direct competition with Complainant, and the Panel presumes that Respondent accrues click-through fees from these links. The Panel concludes that such use does not constitute either a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii), and further indicates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii)”); Disney Enters. Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)(holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy); Vance International, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007)(finding 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 profiting commercially from the click-through fees); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003)(finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); and TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names <xboxentertainment.com>, <www-xbox.com>, <msne.com>, <msnd.com>, and <msntoday.com>.
The disputed domain name <msnonline.com> merely goes to a blank page. “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).” Nike, Inc. v. Fang Wei et al., FA 1272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, failure to develop a site demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000); See also, Microsoft Corporation v. Lang Qing, FA 1447828 (Nat. Arb. Forum July 8, 2012)(finding that the failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo, FA 1282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and HP v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time that Respondent registered or acquired the disputed domain names, Complainant’s XBOX and MSN marks were already famous and familiar to countless consumers. Given the unique and distinctive nature of the XBOX and MSN marks, along with the manner in which Respondent is using the disputed domains, it is clear that Respondent selected these domain names to capitalize on this obvious association with Complainant and its products and services.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Cedric Thompson, D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, by promoting a third party products using Complainant’s XBOX and MSN trademark where Respondent presumably receives some type of compensation, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); and G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website);
Additionally, by promoting third party goods under an identical and confusingly similar domain, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s XBOX and MSN trademarks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004). See also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Moreover, Respondent’s promotion of third party goods disrupts Complainant’s business and falls under Policy ¶4(b)(iii). See Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); and Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)).
Respondent’s failure to actively use the domain name <msnonline.com> is also evidence of bad faith. See Microsoft Corporation v. Lang Qing, FA 1447828 (Nat. Arb. Forum July 8, 2012) (Respondent’s failure to make an active use of the <microsoftcloudaccelerator.com> domain name found to be bad faith under Policy ¶4(a)(iii)); Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”); Chrisma Productions, Inc. v. Thomas Quinn Jr., FA0905001263592 (Nat. Arb. Forum July 13, 2009)(finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶4(a)(iii) of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
It should also be noted that Respondent has been involved in at least two prior UDRP decisions which resulted in findings of bad faith and transfers of the disputed domain names. See Diners Club v. Daina Trading Company, Ltd., FA 1362620 (Nat. Arb. Forum, Jan. 7, 2011) and American Funds Distributors v. Daina Trading Company, Ltd., FA 1503289 (Nat. Arb. Forum, July 21, 2013). In fact, it has been found that this Respondent’s prior UDRP proceedings which involved similar facts and use of the domain names demonstrated bad faith and registration under Policy ¶4(b)(ii).
Based on the foregoing, Respondent has registered each of the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses its MSN mark in connection with a variety of Internet services. Complainant sells video game products and services under the XBOX mark. Complainant has registered both trademarks with the United States Patent and Trademark Office ("USPTO"): XBOX (e.g., Reg. No. 2,646,465 registered on November 5, 2002); and MSN (e.g., Reg. No. 2,153,763 registered April 28, 1998). USPTO registrations satisfy Complainant’s obligation to show rights in its marks under Policy ¶4(a)(i), regardless of where Respondent dwells or operates. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant claims Respondent’s <xboxentertainment.com> and <www-xbox.com> domain names are confusingly similar to the XBOX mark. The addition of the terms “entertainment” or “www-“ do not adequately distinguish the disputed domain names from Complainant’s marks. Adding the gTLD “.com” in the domain names does not adequately distinguish the disputed domain names from Complainant’s marks because they are required by domain name syntax (and holding otherwise would eviscerate the UDRP). 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). The “www-“ only adds to the confusion. See, e.g., Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The generic term “entertainment” is not a distinct addition to the <xboxentertainment.com> domain name. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The <xboxentertainment.com> and <www-xbox.com> domain names are confusingly similar to the XBOX mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <msntoday.com>, <msnonline.com>, <msne.com>, and <msnd.com> domain names are all confusingly similar to the MSN mark. The domain names incorporate “today,” “online” the letter “e,” or the letter “d” into the MSN mark. These additions do nothing but add generic terms or extraneous letters to the MSN mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Terms such as “online” or “today” are not sufficiently distinctive to adequately differentiate the MSN-dominated domain names. See, Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Thus <msntoday.com>, <msnonline.com>, <msne.com>, and <msnd.com> domain names are confusingly similar to the MSN mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been known by any of these domain names. The WHOIS information suggests Respondent is “Daina Trading Company Limited.” Respondent is not affiliated, authorized, or otherwise licensed to make use of the MSN or XBOX marks in domain names. There is no basis for finding Respondent is “commonly known” by any of the disputed domain names under Policy ¶4(c)(ii). See, e.g., Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”); St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent uses the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msne.com>, and <msnd.com> domain names to promote related content as well as advertisements that direct Internet users to Complainant’s competitors. Each of the domain names resolve to template-style websites which have an array of “related terms” hyperlinks appearing, including links to competing, related, and wholly unrelated, goods and services. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel could not find the use of the disputed domain name to be bona fide when the website had been monetized with hyperlinks. Respondent has not established a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use, in setting up a series of monetized hyperlink directories through the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msne.com>, and <msnd.com> domain names.
Complainant claims Respondent has directed the <msnonline.com> domain name to a blank page. Failure to provide any active use of a domain name (of which a web site is only one possible use) suggests there is no bona fide offering or legitimate use of the domain name (absent a response by Respondent). There is no evidence of a demonstrable preparation to use the domain name in connection with a Policy ¶4(c)(i) bona fide offering of goods or services. See, e.g., Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has been involved in at least two prior UDRP decisions., In both instances Respondent was ordered to transfer its domain names. See Diners Club v. Daina Trading Co., Ltd., FA 1362620 (Nat. Arb. Forum Jan. 7, 2011); see also Am. Funds Distribs. v. Daina Trading Co., Ltd., FA 1503289 (Nat. Arb. Forum July 21, 2013). Complainant claims these prior UDRP decisions are evidence of a Policy ¶4(b)(ii) pattern of bad faith registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”). This Panel is not persuaded because there has been no claim Respondent has prevented Complainant from reflecting its marks in a corresponding domain name. Complainant clearly owns the XBOX.com and MSN.com domain names. Even though Respondent may be a “repeat respondent”, each case must be judged on its own merits.
Complainant claims Respondent’s use of the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msne.com>, and <msnd.com> domain names disrupts Complainant’s lawful business under the MSN and XBOX marks. These domain names are used to send Internet users to Complainant’s major competitors through hyperlinks (which presumably generate income for Respondent). In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel considered the respondent’s conduct to have been bad faith disruption, as the domain names were used to promote competing hyperlinks. The hyperlinks on the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msne.com>, and <msnd.com> domain names sufficiently compete with Complainant’s business so the Panel finds bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent’s use of the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msne.com>, and <msnd.com> domain names to host monetized hyperlinks evidences an attempt to profit off of the likelihood Internet users may confuse Complainant as the source or origin of the domain names’ content. The domain names are being used to host hyperlinks, which is evidence of a Policy ¶4(b)(iv) intent to capitalize on the likelihood that Internet users will presuppose the domain names’ and the underlying hyperlink advertisements have some connection with Complainant, and as such Internet users may generate advertising revenue for Respondent by clicking on these hyperlinks. See, e.g., 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).”).
Complainant further claims Respondent’s failure to put the <msnonline.com> domain name to an active use suggests bad faith. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel determined that there was sufficient bad faith so as to satisfy the Policy when the respondent failed to make any use of the domain name for a period of time. Respondent’s <msnonline.com> domain name serves as evidence of Policy ¶4(a)(iii) bad faith. Since Respondent does not appear to be using the domain name for any purpose, this Panel agrees. Why would Respondent register a domain name if Respondent didn’t intend to use it?
Complainant finally argues Respondent knowingly selected these domain names to capitalize on Complainant’s XBOX and MSN marks. In light of the famous nature of Complainant’s marks, this Panel finds Respondent had actual knowledge of Complainant's mark. Respondent registered these disputed domain names to disrupt Complainant’s business for Respondent’s gain. Therefore, Respondent registered and uses the disputed domain names 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <xboxentertainment.com>, <www-xbox.com>, <msntoday.com>, <msnonline.com>, <msne.com>, and <msnd.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, January 2, 2014
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