Microsoft Corporation v. Mantas Bakutis / Manto Bakucio II
Claim Number: FA1407001571317
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Mantas Bakutis / Manto Bakucio II (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxonedigital.com>, registered with Tucows Domains Inc.
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 July 23, 2014; the National Arbitration Forum received payment on July 23, 2014.
On July 24, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <xboxonedigital.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2014 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@xboxonedigital.com. Also on July 24, 2014, 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 19, 2014, 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 name 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.
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. On May 21, 2013, less than a year that the disputed domain name was registered, Microsoft announced its newest XBOX product, XBOX ONE. Microsoft uses distinctive XBOX logos at its sites which advertise its XBOX products, including the one shown here:
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Prior ICANN panelists have found that XBOX and XBOX LIVE are well-known or famous marks. See Microsoft Corp. v. ABK, FA1211001473573 (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, FA1205001445087 (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, FA1206001447775 (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 and XBOX ONE trademarks with the United States Patent and Trademark Office and around the world. These registrations were applied for and issued well prior to May 12, 2014, the registration date for the disputed domain name.
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 NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s famous, registered XBOX trademark.
The disputed domain incorporates the XBOX ONE trademark in its entirety, adding only the generic or descriptive terms “digital” 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. GKG.Net Domain Proxy Service, FA 1488638 (Nat. Arb. Forum, April 15, 2013)(finding <freexboxgamecard.com> confusingly similar to the XBOX trademark, noting that the inclusion of the term “free” is merely to entice potential users to the domain name and to the website to which it resolves); Microsoft Corp. v. Juan, FA 1445083 (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, FA 1324672 (Nat. Arb. Forum June 18, 2010)(finding <xboxonline.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. Benson, FA 1384468 (Nat. Arb. Forum May 24, 2011)(finding <xboxstore.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. BJK c/o YILMAZ, FA 1452490 (Nat. Arb. Forum Aug. 8, 2012)(finding <xboxvideo.com> confusingly similar to XBOX and awarding transfer); Microsoft Corp. v. Shiguo, FA 1445087 (Nat. Arb. Forum July 4, 2012)(finding <xboxmusic.com> confusingly similar to XBOX and awarding transfer); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA 1254682 (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 name is confusingly similar to Complainant’s famous XBOX trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s XBOX mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Mantas Bakutis/Manto Bakucio II. Respondent is not commonly known by Complainant’s XBOX mark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s XBOX mark. 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).
The domain name <xboxonedigital.com> goes to a site which displays the prominent XBOX ONE mark with the sphere logo and photos of XBOX ONE products which Respondent offers for sale. The web site promotes products for XBOX ONE but also promotes competitors for many of Complainant’s products and services, such as Wii, Nintendo, and Playstation. Seeking to attract traffic and revenue using Complainant’s famous trademark, and promoting Complainant’s competitors, 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 Microsoft Corporation v. Daina Trading, FA 1533432 (Nat. Arb. Forum, Jan. 2. 2014)(finding the use of the famous XBOX trademark to attract consumers to Respondent’s commercial website which also promoted products of competitors was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Microsoft Corporation v. The Private Whois Privacy Service, FA 1484502 (Nat. Arb. Forum March 24, 2013)(finding the use of <xbox-gold.com> for pay per click advertising was neither 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)); Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum Jan. 10, 2007)(finding no legitimate interest where the domain name resolved to a website featuring links to third party websites); 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).
Respondent’s prominent 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 XBOXONE DIGITAL site. This constitutes passing off, and is not a legitimate use. See Microsoft Corp. v. QUHO Publicidad FA 1484290 (Nat. Arb. Forum, Mar. 28, 2013)(finding the prominent use of the XBOX logo was an attempt to pass itself off as Complainant which was not a bona fide offering of goods and services or a legitimate noncommercial or fair use); Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … 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)”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010)(noting: “[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”); and Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s XBOX and XBOX ONE marks were famous and familiar to countless consumers. It is clear from the fact that Respondent’s domain name incorporates Complainant’s famous XBOX ONE mark, as well the display of Complainant’s distinctive logo at Respondent’s web site, and the fact that Respondent has pervasive use of XBOX products at the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name 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).
By incorporating Complainant’s famous trademark into the disputed domain, and using Complainant’s trademarks and logos at the corresponding web site, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA 809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant). See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); Microsoft Corp. v.QUHO Publicidad, FA 1484290 (Nat. Arb. Forum, Mar. 28, 2013)(finding Respondent’s attempt to pass itself off as Microsoft at <xboxmexico.com> with the use of the XBOX logos evidenced bad faith use and registration under Policy ¶4(b)(iv)); World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that respondent’s use of the disputed domain name to misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, by identifying itself using Complainant’s famous trademarks, along offering Xbox One games for sale, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s 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)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”); Google Inc. v. Domain Administrator, FA1422926 (Nat. Arb. Forum Feb. 10, 2012)(finding bad faith arising from a survey/gift scheme and noting, “Respondent’s registration and use of the … domain names was done in order to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain names pursuant to Policy ¶4(b)(iv)”); Microsoft Corp. v. PRQ Inet KB / Swartholm, FA1206001450976 (Nat. Arb. Forum Aug 13, 2012)(“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 … domain name in a bad faith attempt to commercially gain from Internet users’ mistakes under Policy ¶4(b)(iv)”); 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 Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007)(finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Based on the foregoing, Respondent has registered the disputed domain name 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 is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant launched the XBOX video game entertainment system, along with associated software and accessories in 2001. Complainant subsequently introduced XBOX LIVE, which allows consumers to play XBOX games against other online players, in 2002. Complainant provided evidence of its registration of the XBOX mark with the United States Patent & Trademark Office (“USPTO”), Office for Harmonization in the Internal Market (“OHIM”), and various other countries around the world. See, e.g., USPTO Reg. No. 2,646,465 registered November 5, 2002; see also OHIM Reg. No. 1,611,235 registered August 6, 2001. Complainant has also registered the XBOX ONE mark with the USPTO (Reg. No. 4,557,248 filed May 21, 2013 registered June 24, 2014). This evidence sufficiently establishes Complainant’s rights in the XBOX and XBOX ONE marks under Policy ¶4(a)(i), regardless of where Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”). Complainant is not required to have registered trademark in Lithuania, where Respondent resides.
Complainant claims Respondent’s <xboxonedigital.com> domain name is confusingly similar to Complainant’s XBOX ONE mark under Policy ¶4(a)(i). Respondent merely adds the descriptive term “digital” and the gTLD “.com.” The Panel in Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) found adding the generic term “collection” to Complainant’s HARRY POTTER mark failed to adequately distinguish the domain name from the mark. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) concluded adding the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark. This Panel agrees with this line of cases. Respondent’s <xboxonedigital.com> domain name is confusingly similar to Complainant’s XBOX ONE 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 no rights or legitimate interests in the <xboxonedigital.com> domain name under Policy ¶4(c)(ii). Respondent is not commonly known by the disputed domain name (either while the disputed domain name was registered through a nominee privacy service nor afterwards). The WHOIS information for Respondent’s disputed domain name currently lists “Mantas Bakutis / Manto Bakucio II” as registrant. Complainant has not authorized or licensed Respondent to use any of Complainant’s marks or the disputed domain name. Based upon this undisputed evidence, Respondent is not commonly known by the <xboxonedigital.com> domain name for purposes of Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website that displays Complainant’s XBOX ONE mark prominently with Complainant’s sphere logo and photos of Complainant’s products which Respondent purports to offer for sale. Respondent displays products of Complainant’s competitors including, Wii, Nintendo, and PlayStation. Respondent’s prominent use of Complainant’s marks and logos suggests Respondent is attempting to pass itself off as Complainant. Respondent’s use of Complainant’s trademarks is reasonably calculated to lead visitors to believe Respondent’s site is affiliated in some way with Complainant, constituting passing off. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found the respondent’s attempt to pass itself of 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 pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. Respondent has no rights or legitimate interests in the <xboxonedigital.com> domain name under Policy ¶¶4(c)(i) or 4(c)(iii).
Furthermore, Respondent used a privacy service to register the disputed domain name. This means a nominee held title to the disputed domain name. Therefore, Respondent could not acquire any rights to the disputed domain name because Respondent concealed its identity from the public. This prevents the creation of any secondary meaning.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <xboxonedigital.com> domain name in bad faith. Respondent’s resolving website offers both Complainant’s products and Complainant’s competitors’ products. Prior panels have found offering products of a complainant’s competitors is a strong indication respondent registered the disputed domain name to compete with and disrupt a complainant’s business under Policy ¶4(b)(iii). 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).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶4(b)(iii).”). Respondent uses the <xboxonedigital.com> domain name to offer products and services which compete with Complainant. Respondent’s registration and use of a confusingly similar domain name for this purpose constitutes bad faith within the meaning of Policy ¶4(b)(iii).
Respondent uses Complainant’s famous marks and logos to create a false impression the resolving website is affiliated with Complainant. Respondent is attempting to commercially profit unfairly and opportunistically from the goodwill associated with Complainant’s marks by offering products of Complainant’s and Complainant’s competitors. The resolving web site appears to be an actual Microsoft site, displaying the XBOX logos and similar header bar to the official XBOX site and a variety of information related to Complainant and Complainant’s XBOX products. Respondent sought to create confusion with Complainant or pass itself off as Complainant to generate some sort of commercial profit. This means Respondent registered and uses the <xboxonedigital.com> domain name in bad faith according to Policy ¶4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”).
Respondent registered the disputed domain name with knowledge of Complainant and its rights in the XBOX ONE mark. By the time Respondent registered the disputed domain name, Complainant’s XBOX ONE mark was famous and familiar to countless consumers. Respondent’s website at <xboxonedigital.com> domain name displays Complainant’s distinctive logos and images related to Complainant’s products. Based upon this information, Respondent must have had actual knowledge of Complainant’s marks. This means Respondent registered and uses the <xboxonedigital.com> domain name in bad faith according to Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, registering a domain name for commercial purposes raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, this Panel finds these grounds would be adequate by themselves to find bad faith registration and use.
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 <xboxonedigital.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 25, 2014
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