Microsoft Corporation v. Instantxboxlive.com c/o Anisha Sheth
Claim Number: FA0811001235725
Complainant is Microsoft
Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <instantxboxlive.com>, registered with 1 & 1 Internet Ag.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2008.
On December 5, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <instantxboxlive.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@instantxboxlive.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 makes the following assertions:
1. Respondent’s <instantxboxlive.com> domain name is confusingly similar to Complainant’s XBOX LIVE mark.
2. Respondent does not have any rights or legitimate interests in the <instantxboxlive.com> domain name.
3. Respondent registered and used the <instantxboxlive.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured, marketed, and sold computer software and related products and services since 1975. Complainant began marketing its XBOX brand video games systems in 2001, and the XBOX LIVE system which allows video game players to play games online. Complainant has registered its XBOX (i.e. Reg. No. 2,775,859 issued October 21, 2003) and XBOX LIVE (i.e. Reg. No. 2,940,682 issued April 12, 2005) marks with the United States Patent and Trademark Office (“USPTO”) and with numerous other governmental trademark authorities worldwide. Complainant also owns and operates the <xbox.com> and <xboxlive.com> domain names in connection with its operations.
Respondent registered the disputed <instantxboxlive.com> domain name on July 13, 2008. The disputed domain name resolves to a website that purports to sell subscription cards for use on Complainant’s online gaming system.
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."
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.”).
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.
The Panel finds that Complainant’s registration of the XBOX
LIVE mark with the USPTO and with other governmental trademark authorities
worldwide adequately confers upon Complainant sufficient rights in the mark
pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed <instantxboxlive.com>
domain name differs from Complainant’s mark in the following manners: (1) the
space in the mark has been removed; (2) the generic top-level domain “.com” has
been added; and (3) the generic word “instant” has been added. The Panel notes that the removal of a space
and the inclusion of a gTLD are irrelevant under Policy ¶ 4(a)(i). Moreover, the Panel finds that the word
“instant” is generic and adds no meaningful distinction. Therefore, the Panel finds that the disputed <instantxboxlive.com>
domain name is confusingly similar to Complainant’s XBOX LIVE mark under Policy
¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb.
Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the
words of Complainant’s mark, as well as the addition of a gTLD does not
sufficiently distinguish the disputed domain name from the mark pursuant to
Policy ¶ 4(a)(i).”); see also Sutton
Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding
that the domain name <suttonpromo.com> is confusingly similar to the
SUTTON mark because the addition of descriptive or non-distinctive elements to
the distinctive element in a domain name is immaterial to the analysis under
Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Because Respondent has not responded to the Complaint, the Panel is therefore left solely with the record based on Complainant’s Complaint and the WHOIS information when making its Policy ¶ 4(c)(ii) analysis. Complainant has alleged that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Respondent is listed as “Instantxboxlive.com c/o Anisha Sheth.” While the disputed domain name is listed in the registration, there is no corroborating evidence to demonstrate that such nomenclature truly pertains to Respondent. Moreover, Complainant alleges that Respondent is not authorized to use Complainant’s marks. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) analysis. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Respondent’s disputed domain name resolves to a website that
purports to sell subscription cards for Complainant’s online gaming
system. Complainant alleges that the
corresponding website seeks to convince Internet users that it is an official
website affiliated with Complainant through the use of Complainant’s logos and
color schemes. The Panel infers that
Respondent sought to use the disputed domain name to target Internet users
seeking access to Complainant’s online gaming system for its own commercial
benefit. Therefore, the Panel finds that
Respondent has failed to create either bona fide offering of
goods or services, or a legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) & (iii).
See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006)
(finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark
to redirect Internet users to the respondent’s own website for commercial gain
does not constitute either 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)).
Complainant contends that Respondent has added a disclaimer
on the resolving website. However,
Complainant argues, and the Panel so finds, that the use of such a disclaimer
fails to mitigate any Internet user confusion that may exist. Specifically, the Panel notes that once the
Internet user has been diverted to Respondent’s website, the damage has already
been done, and the disclaimer will not change the outcome. Therefore, the Panel finds that the use of a
disclaimer by Respondent fails to constitute evidence of Respondent’s rights or
legitimate interests under Policy ¶ 4(a)(ii). See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and
could not, accompany the domain name, then the “domain name attracts the
consumer’s initial interest and the consumer is misdirected long before he/she
has the opportunity to see the disclaimer”); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of
a disclaimer, when the domain name consists of the complainant’s well-known
trademark, does not counter the expectation of Internet users that the domain
name is sponsored by the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s confusingly similar disputed domain name
resolves to a website that sells subscriptions for Complainant’s online gaming
services. The Panel finds that
Respondent has intentionally created a likelihood of confusion as to
Complainant’s endorsement or sponsorship of the disputed domain name for
commercial gain. Such use evidences
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v.
Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the
respondent registered and used the <wwfauction.com> domain name in bad
faith because the name resolved to a commercial website that the complainant’s
customers were likely to confuse with the source of the complainant’s products,
especially because of the respondent’s prominent use of the complainant’s logo
on the site); see also Fanuc Ltd v. Mach.
Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion
with the complainant's mark by using a domain name identical to the
complainant’s mark to sell the complainant’s products).
The Panel also finds that Respondent’s use of a disclaimer
on the resolving website fails to mitigate Respondent’s bad faith registration
and use under Policy ¶ 4(a)(iii). See Auxilium Pharm., Inc.
v. Patel, FA 642141 (Nat.
Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does
not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Thomas & Betts Int’l, Inc. v. Power
Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based
upon initial interest confusion despite disclaimer and link to the
complainant’s website on the respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <instantxboxlive.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 13, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum