Microsoft Corporation v. Rich Eppley
Claim Number: FA1004001319694
Complainant is Microsoft
Corporation (“Complainant”), represented by Kristina Rosette, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2010.
On April 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 April 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2010 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@xboxwiredcontroller.com, postmaster@xboxreplacement.com, postmaster@xboxcontrollermod.com, postmaster@xboxcontrol.com, postmaster@xboxcontrollerdrivers.com, postmaster@xboxacessories.com, and postmaster@xbox360controler.com by e-mail. Also on April 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 May 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names are confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names.
3. Respondent registered and used the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its XBOX mark (e.g., Reg. No. 2,646,465 issued November 5, 2002) in connection with its video game consoles, games, and related products.
Respondent, Rich Eppley, registered the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names no earlier than March 9, 2000. All of the disputed domain names resolve to websites that contain hyperlinks resolving to Complainant and Complainant’s third-party competitors in the video game industry.
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.
Previous panels have held that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Prior panels have further found that the effective date of a complainant’s rights in a mark is the filing date. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Complainant contends that it has established rights in its XBOX mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,646,465 issued November 5, 2002). Complainant filed its trademark application on October 18, 1998 which is prior to Respondent’s registration of the disputed domain names no earlier than March 9, 2000. Thus, the Panel determines that Complainant has established rights in its XBOX mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names are confusingly similar to Complainant’s XBOX mark. The disputed domain names include Complainant’s entire mark and add either generic terms, such as “replacement” or “accessories,” or add terms that describe Complainant’s video game business, for example “controller,” “mod,” “control,” “drivers,” “controler.” The <xbox360controler.com> domain name also adds the numbers “360,” which relates to one of Complainant’s video game consoles. All of the disputed domain names further include the generic top-level domain (“gTLD”) “.com.” The Panel finds the additions of generic terms, descriptive terms, numbers, and gTLDs do not adequately distinguish the disputed domain names from Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Consequently, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that
Respondent does not have any rights or legitimate interests in the disputed
domain name. The burden shifts to
Respondent to prove it does have rights or legitimate interests when
Complainant makes a prima facie case
in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient
prima facie case. Respondent’s failure to respond to the
Complaint allows the Panel to infer that Respondent does not have rights or
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Vanguard Group,
Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding
that because the respondent failed to submit a Response, “Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”); see also Domtar,
Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well
established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts
to respondent to show that it does have rights or legitimate interests pursuant
to paragraph 4(a)(ii) of the [UDRP].”).
The WHOIS information identifies the domain name registrant as “Rich Eppley,” which Complainant argues is not similar to the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names. Complainant alleges that Respondent is not licensed or authorized to utilize Complainant’s XBOX mark. The Panel finds no evidence in the record, and Respondent failed to present any evidence, that would support a finding that Respondent is commonly known by the disputed domain names. For the aforementioned reasons, the Panel holds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent uses the disputed domain names to resolve to websites featuring hyperlinks to Complainant and Complainant’s competitors in the video game industry. Complainant contends that Respondent receives pay-per-click fees earned from the hyperlinks. The Panel finds Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names resolve to websites featuring hyperlinks that resolve to Complainant and Complainant’s competitors in the video game industry. Complainant argues that Internet users interested in Complainant’s XBOX video game products may purchase competing products from one of Complainant’s competitors instead solely as a result of Respondent’s use of the confusingly similar disputed domain names. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iii) as Respondent’s use disrupts Complainant’s video game business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks. The Panel presumes Respondent commercially benefits in some way from its use of the disputed domain names. Internet users may become confused as to Complainant’s sponsorship of or affiliation with the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel determines Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxwiredcontroller.com>, <xboxreplacement.com>, <xboxcontrollermod.com>, <xboxcontrol.com>, <xboxcontrollerdrivers.com>, <xboxacessories.com>, and <xbox360controler.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 2, 2010
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