Microsoft Corporation v. Peter Steins
Claim Number: FA2208002006668
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Peter Steins (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox-forums.com>, registered with INWX GmbH.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2022; the Forum received payment on August 2, 2022.
On August 3, 2022, INWX GmbH confirmed by e-mail to the Forum that the <xbox-forums.com> domain name is registered with INWX GmbH and that Respondent is the current registrant of the name. INWX GmbH has verified that Respondent is bound by the INWX GmbH 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 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2022 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-forums.com. Also on August 3, 2022, 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.
A timely Response was received and determined to be complete on September 7, 2022.
An Additional Submission from Complainant was received on September 9. As the Additional Submission was in compliance with Rule 7, the Panel will consider it in rendering a decision below.
On September 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Even though the registration agreement for the disputed domain is in German, and even though the Respondent has answered the English language Complaint in German, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is proficient in the English language. That evidence includes screenshots showing that the content placed on the disputed domain name’s resolving website is mainly in the English language. Thus, after considering these circumstances, and since the Panel and Complainant can read the Respondent’s German language Response, the Panel decides that these proceedings and the resultant decision should be in English. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1; see also Oath Inc. v. Pavel Seliverstov, FA 1963038 (Forum Oct. 26, 2021) (finding that conducting the Policy proceedings in English was appropriate when “...Respondent has chosen English as the language of the website to which the Infringing Domain Name resolves.”); see also Spike's Holding, LLC v. Jun Wu Wei, FA 1916276 (Forum Nov. 9, 2020) (“The resolving website is in English, so Respondent is familiar with that language.”).
A. Complainant
- Since 1975, Complainant has been engaged in the business of software creation, including the XBOX video game entertainment system, which debuted in 2001. By 2013, Complainant had sold more that 80 million XBOX consoles and, as of late 2014, there were more that 48 million XBOX members in over 41 countries in the world.
- Complainant has registered its XBOX trademark throughout the world, including with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <xbox-forums.com>, is identical or confusingly similar to Complainant’s XBOX trademark. The disputed domain name incorporates the mark in its entirety, only adding the generic term “forums” and the “.com” generic top-level domain (“gTLD”).
- Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, and Complainant has not licensed or authorized Respondent to use the XBOX mark. Also, Respondent is not commonly known by that mark. Moreover, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use because Respondent’s resolving website attempts to pass off as Complainant’s by using Complainant’s logo and similar colors. That website also redirects internet users to unrelated third-party links, from which Respondent presumably receives click-through fees.
- Respondent registered and uses the disputed domain name in bad faith. Respondent intentionally attempts to attract users for commercial gain, passing himself off as associated with Complainant and hosting third-party pay-per-click hyperlinks. Additionally, Respondent had actual notice of Complainant’s rights in its world-famous XBOX trademark.
B. Respondent
- Respondent admits that Complainant’s XBOX mark is known throughout the world.
- The disputed domain name has been registered for approximately twenty years, during most of which time Complainant has failed to object to its registration and usage.
- Third parties have registered and are using domain names that incorporate the XBOX mark, and apparently Complainant takes no issue with those registrations and that usage. Those domain names include <purexbox.com>, <xboxaktuell.de>, <xboxuser.de>, <xbox-one.de> and <Xboxdynasty.de>.
- The disputed domain name is used by Respondent to host a forum for users of Complainant’s XBOX games, which is a legitimate purpose.
C. Complainant’s Additional Submission
- The fact that the disputed domain name may have been registered for almost twenty years is irrelevant because there is no evidence that Respondent owned the disputed domain name before December 6, 2018. The doctrine of laches does not apply to Policy cases.
- Third parties may own domain names that incorporate Complainant’s XBOX trademark, but that does not protect Respondent from Complainant’s claims of illegitimate registration and use of the disputed domain name under the Policy.
- Respondent is using the disputed domain name for purposes other than as a forum, including purposes facilitating Respondent’s commercial gain.
Complainant is a United States company that engages in the production of video game entertainment on a global basis. It began its production of its XBOX video game in 2001 and has valid registrations for the XBOX trademark throughout the world, including with the USPTO (e.g., Reg. No. 2,817,709, registered on February 24, 2004).
Respondent owns the disputed domain name, <xbox-forums.com>, which was first registered on August 19, 2002. Respondent obtained registration of the disputed domain name on December 6, 2018, and uses it to host a website that offers links to third-party websites and bears the same logo and color scheme found on Complainant’s XBOX 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.
As Complainant has provided convincing evidence to the Panel of Complainant’s valid USPTO registration for the XBOX trademark, the Panel determines that Complainant has the necessary rights in that mark to satisfy Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Clearly, the disputed domain name, <xbox-forums.com>, is not identical to Complainant’s XBOX trademark. However, the Panel finds that the differences are not substantial. The disputed domain name contains the mark in full, adding only a hyphen, the descriptive term, “forums,” and the “.com” gTLD. Many prior UDRP panels have found that the addition of a hyphen and a simple descriptive term to an established trademark is not sufficient to prevent confusing similarity between the disputed domain name containing those additional elements and that trademark. Moreover, in this case, the descriptive term, “forums,” could easily apply to Complainant’s mark, only enhancing confusion. Finally, in line with the overwhelming consensus of previous Policy rulings, the Panel notes that the added gTLD is of no relevance in the determination of similarity between a disputed domain name and a corresponding trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s XBOX trademark. See Microsoft Corporation v. Craig Douglas, FA 1955565 (Forum Aug. 13, 2021) (finding <xbox-clips.com> to be confusingly similar to the XBOX mark); see also Qualcomm Atheros, Inc. v. BUBIK s.r.o., FA 1733392 (Forum July 1, 2017) (finding <atheros-forum.com> to be confusingly similar to the ATHEROS mark).
As a result, the Panel finds that Complainant has satisfied the first element required under the Policy.
The consensus of prior UDRP decisions clearly is that, under Policy ¶ 4(a)(ii), if a complainant makes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, then the burden shifts to Respondent to demonstrate that it does have those rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant has established to the Panel’s satisfaction that the disputed domain name is confusingly similar to Complainant’s XBOX trademark. Also, Complainant asserts plainly that it has granted no license or authority to Respondent to use that mark for any purpose. Accordingly, the Panel determines that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
In rebuttal to Complainant’s prima facie case, Respondent contends that he is making a legitimate noncommercial fair use of the disputed domain name in hosting a website that provides a “forum” (i.e., a space for critical discussion and/or evaluation) designed for users of Complainant’s XBOX games. The Panel’s examination of Respondent's website does suggest the display of internet-user comments regarding Complainant’s XBOX products, which might be considered as some kind of “forum.” However, the Panel agrees with Complainant that the same website also hosts third-party links that are most certainly placed there to enable Respondent to collect pay-per-click revenue. As a result, the Respondent cannot convincingly contend that he is making a “non-commercial or fair use” of the disputed domain name under Policy ¶ 4(c)(iii). See Qualcomm Atheros, Inc. v. BUBIK s.r.o., supra (finding that the website attached to <atheros-forum.com> could not be considered as a noncommercial “forum” space regarding the complainant’s services because the respondent was generating revenue through the third-party links placed on that website).
Moreover, the Panel finds that Respondent’s use of the disputed domain name to host a website that contains pay-per-click third-party links, and presents Complainant's logo along with its distinctive coloring, does not constitute “a bona fide offering of goods or services” per Policy ¶ 4(c)(i). See AbbVie Inc. v. Liu Yuan, FA 1895254 (Forum June 5, 2020) (“The use of a disputed domain name to redirect Internet users to unrelated commercial webpages is not a bona fide offering of goods or services...”); see also Damien Persohn v. Joshua Lim, FA 874447 (Forum Feb. 19, 2007) (“...Respondent’s use of the disputed domain name for commercial gain, presumably by earning “click-through” fees for each consumer Respondent diverts to other websites, is not bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i)...”).
Finally, as Respondent presents no evidence that he, Peter Steins, is commonly known by the disputed domain name, <xbox-forums.com>, the Panel determines that Policy ¶ 4(c)(ii) is inapplicable to this case as well.
Therefore, Complainant’s prima facie case has not been successfully rebutted.
As a result, the Panel finds that Complainant has satisfied the second element required under the Policy.
Policy ¶ 4(b)(iv) specifies that the Panel my find that the disputed domain name was registered and is being used in bad faith if:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
Complainant has established that the disputed domain name is confusingly similar to Complainant’s XBOX trademark. Complainant has also shown that the disputed domain name resolves to Respondent’s website, which replicates Complainant’s XBOX logo, complete with similar coloration, and which contains links to third-party websites that more than likely involve Respondent’s collection of pay-per-click fees. Accordingly, the Panel concludes that Respondent is intentionally attempting to attract internet users for commercial gain to its website by creating the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website in bad faith pursuant to Policy ¶ 4(b)(iv). See AbbVie Inc. v. Liu Yuan, supra (“The use of a disputed domain name to display third party hyperlinks may be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv).”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Respondent contends that the disputed domain name was initially registered about twenty years ago, and contends that its registration was legitimate and not in bad faith. However, the Panel notes that, within UDRP proceedings, the relevant registration date for consideration is when a respondent acquired rights to a disputed domain name. In this case, Respondent has provided no evidence that it owned rights in the disputed domain name prior to December 6, 2018, so the Panel views the initial date of the disputed domain name’s creation as irrelevant. See WIPO Overview 3.0, section 3.8.1 (“Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.”); see also Licensing IP International S.à.r.l. v. Nanci Nette, FA 1846772 (Forum July 11, 2019) (“It is accepted amongst UDRP Panels to consider the date on which the Respondent acquired the disputed domain rather than only the creation date thereof.”).
Respondent also argues that there are several other domain names that are owned by third parties and that contain Complainant’s XBOX mark along with generic terms, insinuating that his use of the disputed domain name must be considered legitimate and not in bad faith if Complainant allows ownership and use of those other domain names without challenge. Again, the Panel must find this Respondent argument to be irrelevant. In this proceeding, it is not within the purview of the Panel to evaluate Complainant’s conduct with respect to other possibly infringing domain names, but it is only to consider whether or not rights in the disputed domain name should be transferred to Complainant. See Fox Media LLC v. Global Investor Media Ltd., FA 1900503 (Forum Aug. 3, 2020) (“Respondent's argument that Complainant is somehow precluded from acting against Respondent because other third-party domains contain Complainant's Marks is incorrect. The improper conduct of third parties does not excuse Respondent's improper conduct, and Complainant is under no obligation to act against every infringing use.”).
As a result, the Panel finds that Complainant has satisfied the third element required under the Policy.
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-forums.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: September 29, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page