Microsoft Corporation v. K E HENRY
Claim Number: FA1012001364807
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is K E HENRY (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinectshoponline.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2010; the National Arbitration Forum received payment on December 22, 2010.
On December 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kinectshoponline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 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@kinectshoponline.com. Also on December 29, 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 January 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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 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 <kinectshoponline.com> domain name is confusingly similar to Complainant’s KINECT mark.
2. Respondent does not have any rights or legitimate interests in the <kinectshoponline.com> domain name.
3. Respondent registered and used the <kinectshoponline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, sells video game consoles, software, and accessories. Complainant uses the KINECT mark in connection with a sensory accessory for its XBOX 360 video game console. Complainant provides evidence that the mark received widespread global press coverage immediately after Complainant formally announced its KINECT product on June 13, 2010. In addition, Complainant has filed a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the KINECT mark (e.g., Serial No. 85,023,473 filed April 26, 2010).
Respondent, K E HENRY, registered the <kinectshoponline.com> domain name on June 14, 2010. Respondent previously used the disputed domain name to profit from advertisement and click-through fees. The disputed domain name currently 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."
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.
Complainant has filed for trademark registration with the USPTO, but Complainant does not yet hold a trademark registration for the KINECT mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant uses the KINECT mark in connection with a sensory accessory for its XBOX 360 video game console. Complainant formally announced the release of its sensor at an event on June 13, 2010. Complainant asserts that immediately after the announcement there was widespread, global press coverage of the KINECT name, including articles in The Wall Street Journal, ABC, BBC, Bloomberg/BusinessWeek, CBS, CNET, CNN, MTV, PC Magazine, Reuters, The Washington Post, and other sources. Complainant provides copies of these articles and evidence that they were posted on June 13 and June 14, 2010. The Panel finds that Complainant has provided sufficient evidence to support a finding that the KINECT mark has acquired secondary meaning. Accordingly, the Panel finds that Complainant has established common law rights in the KINECT mark pursuant to Policy ¶ 4(a)(i) that date back to June 13, 2010. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant contends Respondent’s <kinectshoponline.com> domain name is confusingly similar to its KINECT mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely adds the generic terms “shop” and “online.” Respondent also attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that these additions do not significantly distinguish Respondent’s domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); 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). Therefore, the Panel finds that Respondent’s <kinectshoponline.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <kinectshoponline.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts Respondent is not licensed or otherwise authorized to use its KINECT mark. Additionally, the WHOIS information lists “K E Henry” as the registrant of the disputed domain name, which the Panel finds is not similar to the <kinectshoponline.com> domain name. Without evidence to the contrary, the Panel finds that Complainant’s assertion combined with the WHOIS registrant information suggests that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant claims that the disputed domain name previously resolved to a website that provided advertisements and links for various third-party products and services that are unrelated to Complainant. Complainant contends that Respondent received compensation for directing Internet users to these third-party websites. The Panel finds that Respondent used a confusingly similar domain name to receive advertisement and click-through fees. Therefore, the Panel finds that Respondent did not use the <kinectshoponline.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant alleges the disputed domain name currently resolves to an inactive website. The Panel finds that Respondent’s failure to make active use of the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel presumes that Respondent previously used the <kinectshoponline.com> domain name to profit from advertisement and click-through fees. Moreover, the Panel finds the disputed domain name is confusingly similar to Complainants’ KINECT mark. Therefore, the Panel determines that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of Respondent’s website. As a result, the Panel finds that Respondent’s behavior constituted registration and use in bad faith under Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant alleges Respondent registered the disputed domain name on June 14, 2010, one day after Complainant made its official announcement regarding the release of its KINECT sensory accessory. Based on the evidence in the record, the Panel finds that Respondent engaged in opportunistic registration, which amounts to bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).
Finally, Complainant claims the <kinectshoponline.com> domain name currently resolves to an inactive website. Prior panels have found that failure to make active use of a confusingly similar domain name can amount to bad faith when a respondent registered the disputed domain name after the complainant acquired rights in the mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). As previously discussed, Complainant acquired common law rights in the KINECT mark on June 13, 2010. Respondent registered the disputed domain name on June 14, 2010. Therefore, Respondent registered the confusingly similar <kinectshoponline.com> domain name after Complainant acquired rights in the KINECT mark. Accordingly, the Panel finds Respondent’s failure to make active use of the domain name provides further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinectshoponline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 25, 2011
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