Microsoft Corporation v.
Claim Number: FA0905001263117
Complainant is Microsoft Corporation (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxatomic.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“Directi”).
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A Response was received in electronic form on
On June 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant manufactures and sells video game entertainment systems,
software, and accessories under the XBOX brand.
Complainant has obtained numerous trademark registrations for XBOX and
variations thereof, in the
Complainant further alleges that Respondent lacks rights or legitimate interests in the disputed domain name, asserting in support thereof that Respondent is not commonly known by the mark, and has not used the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant asserts that the website to which the disputed domain name resolves “features pornographic content that glorifies rape and incest” and includes revenue-generating links to other similar sites. Complainant contends that Respondent is misleadingly and deceptively diverting Internet users to Respondent’s website for commercial gain. Complainant also notes that Respondent’s name, as reflected in the whois database entry for the disputed domain name, includes the phrase “Domain Sale and Lease,” and contends that acquiring a domain name in order to sell or lease it is not a legitimate interest or bona fide use. Complainant contends, largely for the same reasons, that Respondent registered and is using the disputed domain name in bad faith.
Respondent’s submission, in its entirety, reads as follows: “As a legal owner of XBOX360 game console I have a right to register domain name containing word ‘xbox’. I purchased my XBOX 360 fairly and legal why shouldn’t I register a domain name containing ‘xbox’?”
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant contends that the disputed domain name is confusingly similar to its XBOX mark, a claim that Respondent does not contest. The disputed domain name combines Complainant’s mark with the word “atomic,” presumably included merely as a generic intensifier. The Panel concludes that the disputed domain name is confusingly similar to Complainant’s XBOX mark.
Complainant’s allegations and evidence suffice to make a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden of production therefore shifts to Respondent to come forward with concrete evidence of such rights or interests. See e.g. Am. Online, Inc. v. Thricovil, FA638077 (Nat. Arb. Forum Mar. 22, 2006).
Respondent claims that as a legal owner of an XBOX console, Respondent has a right to register a domain name containing the corresponding mark. Yet Respondent offers neither authority nor explanation to support that claim, nor any evidence that Respondent in fact owns an XBOX console. Furthermore, in light of the evidence presented by Complainant, it appears doubtful that Respondent’s registration of the disputed domain name is related to any ownership or use of an XBOX console. To the contrary, Respondent appears to be using the domain name to attract Internet users to a commercial website bearing no relationship of any sort to Complainant’s XBOX system. Such use is indicative of a lack of rights or legitimate interests. See Deep Foods, Inc. v. Jamruke, LLC, FA648190 (Nat. Arb. Forum Apr. 10, 2006) (finding no rights or legitimate interests where domain name was used to attract random Internet traffic to a website offering goods and services unrelated to the domain name). Accordingly, the Panel concludes that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Complainant alleges bad faith based upon the use of the disputed domain name for a pornographic and commercial website, and the presence of “Domain Sale and Lease” in the whois record for the domain name. Under paragraph 4(b)(i) of the Policy, bad faith may be inferred from circumstances indicating that a domain name has been registered primarily to sell or rent it at a profit to the owner of a corresponding trademark or a competitor thereof. Under paragraph 4(b)(iv), bad faith may be inferred if the respondent has intentionally attempted to attract Internet users to a commercial website by creating a likelihood of confusion with the corresponding trademark. Complainant has demonstrated both of those circumstances to the Panel’s satisfaction. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxatomic.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 29, 2009
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