Microsoft Corporation v. Asia Proxies / Instant Gaming Limited
Claim Number: FA1608001686749
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Asia Proxies / Instant Gaming Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xbox-live-one.com> and <xboxliveone.com>, registered with Gandi SAS.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2016; the Forum received payment on August 2, 2016.
On August 4, 2016, Gandi SAS confirmed by e-mail to the Forum that the <xbox-live-one.com> and <xboxliveone.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 August 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2016 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@xbox-live-one.com, postmaster@xboxliveone.com. Also on August 4, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions
Policy ¶ 4(a)(i)
Complainant has rights in the XBOX LIVE and XBOX ONE marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,902,268, registered Nov. 9, 2004 for XBOX LIVE; Reg. No. 4,557,248, filed May 21, 2013, registered June 24, 2014, for XBOX ONE). Respondent’s <xbox-live-one.com> and <xboxliveone.com> domain names are confusingly similar to the XBOX LIVE and XBOX ONE marks because they each incorporate the words of the marks along with the generic top-level domain (“gTLD”) “.com,” while the <xbox-live-one.com> domain name also contains hyphens.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <xbox-live-one.com> and <xboxliveone.com> domain names as the available WHOIS information identifies “Asia Proxies/Instant Gaming Limited” as Registrant and because Respondent is not affiliated with Complainant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <xbox-live-one.com> domain name is used to pass off as Complainant by displaying Complainant’s logos, marks and branded color combination on a website purporting to sell products related to Complainant and the <xboxliveone.com> domain name resolves to an inactive website.
Policy ¶ 4(a)(iii)
Respondent uses the disputed domain names in bad faith because the <xbox-live-one.com> domain name is used to pass off as Complainant while the <xboxliveone.com> domain name resolves to an inactive website. Respondent registered the domain names in bad faith because it did so with knowledge of Complainant and its XBOX LIVE and XBOX ONE marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.
2. Complainant has rights in the XBOX LIVE and XBOX ONE marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,902,268, registered Nov. 9, 2004 for XBOX LIVE; Reg. No. 4,557,248, filed May 21, 2013, registered June 24, 2014, for XBOX ONE).
3. The <xbox-live-one.com> domain name was created on May 21, 2013 and the <xboxliveone.com> domain name was created on May 30, 2016.
4. The <xbox-live-one.com> domain name is used by Respondent to pass itself off as Complainant by displaying Complainant’s logos, marks and branded color combination on a website purporting to sell products related to Complainant and the <xboxliveone.com> domain name resolves to an inactive website.
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(f), 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the XBOX LIVE and XBOX ONE marks through its registration with the USPTO (Reg. No. 2,902,268, registered Nov. 9, 2004 for XBOX LIVE; Reg. No. 4,557,248, filed May 21, 2013, registered June 24, 2014, for XBOX ONE). Complainant has provided evidence of these registrations in Exhibit D. Accordingly, the Panel finds that Complainant has rights in the XBOX LIVE and XBOX ONE marks under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The second issue that arises is whether the disputed <xbox-live-one.com> and <xboxliveone.com> domain names are identical or confusingly similar to Complainant’s XBOX LIVE and XBOX ONE marks. Complainant contends that Respondent’s <xbox-live-one.com> and <xboxliveone.com> domain names are confusingly similar to the XBOX LIVE and XBOX ONE marks because they each incorporate the words of the marks along with the gTLD “.com,” while the <xbox-live-one.com> domain name also contains hyphens. As such, the Panel finds the domain names confusingly similar to the marks. See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.); 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").
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s XBOX LIVE and XBOX ONE marks and to use them in its domain names;
(b) Respondent registered the <xbox-live-one.com> domain name on May 21, 2013 and the <xboxliveone.com> domain name on May 30, 2016;
(c) The <xbox-live-one.com> domain name is used by Respondent to pass itself off as Complainant by displaying Complainant’s logos, marks and branded color combination on a website purporting to sell products related to Complainant and the <xboxliveone.com> domain name resolves to an inactive website;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant submits that Respondent is not commonly known by the <xbox-live-one.com> and <xboxliveone.com> domain names as the available WHOIS information identifies “Asia Proxies/Instant Gaming Limited” as Registrant and because Respondent is not affiliated with Complainant. Accordingly, as the Panel finds a lack of contrary evidence in the record, it finds that Respondent is not so known. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark);
(f) Complainant contends that Respondent fails to use the <xbox-live-one.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it is used to pass itself off as Complainant by displaying Complainant’s logos, marks and branded color combination on a website purporting to sell products related to Complainant, such as XBOX LIVE and XBOX LIVE GOLD subscriptions and gift cards. Complainant maintains that the website also promotes products unrelated to Complainant, such as “Sony PlayStation.” Complainant has provided screenshot of the resolving website, in Exhibit E, as well as screenshots of its own website, in Exhibit B, to demonstrate this use. As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <xbox-live-one.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant);
(g) Complainant maintains that Respondent fails to use the <xboxliveone.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it resolves to an inactive website. Complainant has provided a screenshot of the website, in Exhibit F, to demonstrate this use. As the Panel finds this sufficient, it finds that Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent uses the <xbox-live-one.com> domain name in bad faith because it is used to pass itself off as Complainant. Complainant urges that the resolving website displays Complainant’s logos, marks and branded color combination while purporting to sell products related to Complainant, such as XBOX LIVE and XBOX LIVE GOLD subscriptions and gift cards. Complainant has provided screenshot of the resolving website, in Exhibit E, as well as screenshots of its own website, in Exhibit B, to illustrate this use. As the Panel finds this evidence sufficient, it finds that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Secondly, Complainant maintains that Respondent uses the <xboxliveone.com> domain name in bad faith because it resolves to an inactive website. Complainant has provided a screenshot of the website, in Exhibit F, to demonstrate this use. As the Panel finds this sufficient, it finds that Respondent uses the domain in bad faith. See 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 satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Thirdly, Complainant contends that Respondent registered the domain names in bad faith because it did so with knowledge of Complainant and its XBOX LIVE and XBOX ONE marks. Complainant submits that the combination of the fame and familiarity of the marks, the combination of marks in the domain names, and the references to Complainant and its products on the <xbox-live-one.com> domain name are indicative of Respondent having registered the domain names with knowledge of the trademarks. As the Panel finds this argument compelling to show actual knowledge of Complainant’s rights in the marks, it finds that Respondent registered the domain names in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <xbox-live-one.com> and <xboxliveone.com> domain names using the XBOX LIVE and XBOX ONE marks and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xbox-live-one.com> and <xboxliveone.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 7, 2016
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