Microsoft Corporation v. Micro Kinect
Claim Number: FA1012001364944
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Micro Kinect (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftkinect.com>, registered with Name.com, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2010; the National Arbitration Forum received payment on December 23, 2010.
On Dec 27, 2010, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <microsoftkinect.com> domain name is registered with Name.com, LLC and that Respondent is the current registrant of the names. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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@microsoftkinect.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 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Microsoft is the owner of numerous proprietary marks for its goods and services, including the world famous trademark MICROSOFT.
The MICROSOFT Trademark
The trademark “MICROSOFT” was first used by Complainant in commerce at least as early as 1975, was continuously used thereafter, and is still in use in connection with software and other goods and services. According to surveys by Interbrand Corp., MICROSOFT was the third most valuable brand in the world in 2009 and 2010. In addition, the MICROSOFT trademark has been found by panelists of the National Arbitration Forum and WIPO to be an internationally famous and distinctive mark. See Microsoft Corp. v. Microsof.com aka Tarek Ahmed, D2000-0548 (WIPO July 21, 2000) (finding that Complainant’s MICROSOFT mark is “well known throughout the world”); Microsoft Corp. v. Cedric Thompson, D2004-1097 (WIPO April 14, 2005) (noting that several previous panels have concluded that Complainant’s MICROSOFT trademark is internationally famous and “readily” subscribing to these findings) (citations omitted); Microsoft Corp. v.Wayne Lybrand, D2005-0020 (WIPO March 18, 2005) (noting that the “uncontested evidence indicates plainly that MICROSOFT is a famous mark, and indeed, several previous WIPO panels have recognized it as such”) (citations omitted); and Microsoft Corp. v. OzGrid Business Applications, FA314308 (Nat. Arb. Forum Oct. 6, 2004) (noting that Complainant’s MICROSOFT mark “has become distinctive, well-known and has developed considerable goodwill”).
Microsoft owns more than 25 United States registrations for the trademark MICROSOFT, and more than 600 trademark and service mark applications and registrations for the mark throughout the world. These registrations were applied for and issued prior to the registration date for the disputed domain.
The KINECT Trademark
Since 2001, Microsoft has offered video game consoles, software and accessories under its famous XBOX brand. In 2002, Microsoft introduced XBOX LIVE which allows consumers to play XBOX games against other online players, among other benefits. In 2005, Microsoft introduced its second generation gaming console and platform under the trademark XBOX 360. As of its 2008 fiscal year, Microsoft had sold more than 19 million XBOX 360 consoles and XBOX LIVE had more than 12 million members.
KINECT is Microsoft’s brand name for a breakthrough sensor accessory introduced in 2010 for XBOX 360. KINECT is the subject of International Registration No. 1037974, designating various countries and dated April 29, 2010; Hong Kong Registration No. 301,599,599, with a priority date of October 29, 2009; and numerous pending trademark applications, including US Trademark Application No. 85/023,473 which has a priority date of October 29, 2009.
The KINECT sensor was formally announced at an event on Sunday June 13, 2010. Immediately thereafter, there was widespread, global press coverage of the KINECT name, including articles in The Wall Street Journal, ABC, BBC, Bloomberg/BusinessWeek, CBS, CNET, CNN, Engadget, MTV, PC Magazine, Reuters, The Seattle Times, TheStreet.com, The Washington Post, and other sources throughout the world. In fact, press coverage and promotion for KINECT was so pervasive on June 13 and 14, 2010 that KINECT was already famous and uniquely associated with Microsoft at the time the disputed domain name was registered. See Microsoft Corp. v. None a/k/a Prakash Prasad Timilsina, FA0906001271165 (Nat. Arb. Forum July 30, 2009)(finding that BING acquired secondary meaning on its launch date sufficient to sufficient to establish rights to satisfy the requirements of Policy ¶4(a)(i)).
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is identical or confusingly similar to Complainant’s famous MICROSOFT and KINECT trademarks.
The domain name incorporates both of Complainant’s famous and highly distinctive MICROSOFT and KINECT marks in their entirety, adding only the generic TLD .com. This change is not sufficient to avoid a likelihood of confusion. See Microsoft Corporation v. Jean Pierre Lafont, FA 1349611 (Nat. Arb. Forum Nov. 11, 2010) (finding the addition of a hyphen with a gTLD in the domain name <msn-reload.com> was not sufficient to distinguish the domain name); See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (top-level domains are irrelevant for purposes of the Policy).
For the above reasons, <microsoftkinect.com> is confusingly similar to Complainant’s MICROSOFT and KINECT trademarks.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s MICROSOFT or KINECT trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as “Micro Kinect”. Respondent is not commonly known by Complainant’s MICROSOFT or KINECT trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s MICROSOFT or KINECT trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain name resolves to a page which displays an HTTP error stating “Request-URI too long. The requested URL’s length exceeds the capacity limit for this server.” Respondent’s failure to use the domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Google, Inc. v. Rafi, FA 1230595 (Nat. Arb. Forum, Dec. 8, 2008) (where the respondent was found to have no rights or legitimate interests in the disputed domain which resolved to a page displaying an HTTP error). “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, failure to develop the site demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000). See also Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name is not 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)); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a 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); and HP v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not 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)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the domain name, Complainant’s MICROSOFT trademark was clearly a famous mark throughout the world and the KINECT trademark was familiar to countless consumers worldwide through ubiquitous press coverage of the KINECT launch. In fact, Respondent registered the disputed domain name within hours of the KINECT launch event. It is clear that Respondent was not only familiar with Complainant’s MICROSOFT and KINECT trademarks at the time of registration of the domain name, but intentionally adopted a name incorporating the MICROSOFT and KINECT marks in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Cedric Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Respondent’s failure to post anything at the website that resolves from the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Google, Inc. v. Rafi, FA 1230595 (Nat. Arb. Forum, Dec. 8, 2008) (finding bad faith where the disputed domain resolved to a page displaying an HTTP error); See also, Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum, Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to use a domain name permits an inference of registration and use in bad faith).
Furthermore, Respondent registered the disputed domain within hours after Complainant’s official product introduction, amidst widespread global press coverage regarding Complainant’s selection of the trademark KINECT, and this reflects opportunistic bad faith. See Microsoft Corp. v. Mickaël Newton c/o (P), FA1006001332788 (Nat. Arb. Forum Aug 21, 2010)(finding that registration of <kinectxbox.com> and <xbox-kinect.com> on the eve of the KINECT launch reflected opportunistic bad faith); Sun Microsystems v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(finding that registration of <javastore.com> a little over a month after the complainant’s announcement of a similarly named service was evidence of “opportunistic bad faith under Policy ¶4(a)(iii)”); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a 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”); and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)(“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corp. is a global computer software and services provider. Complainant has been operating in the field since 1975. Complainant owns multiple trademark registrations with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued July 6, 1982) for its MICROSOFT mark. Complainant uses its mark to market and support its software and computer services business.
Respondent Micro Kinect registered the disputed domain name on June 14, 2010. The disputed domain name does not resolve to a website. The disputed domain name only leads to a server error when utilized.
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 asserts it has rights in its MICROSOFT mark due to its federal trademark registrations in the mark. Previous panels have found registration of a mark with a federal trademark authority establishes ones rights in said mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also 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.”). Therefore, the Panel finds Complainant has established rights in the MICROSOFT mark under Policy ¶4(a)(i) by registering that mark with the USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982).
This Panel has previously recognized Complainant’s interests in the KINECT mark, Microsoft Corporation v. Mickaël Newton c/o (P) FA1006001332788 (August 21, 2010).
Complainant also asserts Respondent’s <microsoftkinect.com> domain name is confusingly similar to its MICROSOFT mark. The disputed domain name incorporates Complainant’s entire registered mark while adding the descriptive term “kinect,” which describes Complainant’s Kinect video game product, and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a descriptive term of one of Complainant’s products and a gTLD does not sufficiently differentiate the Respondent’s disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds Respondent’s <microsoftkinect.com> domain name is confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
The Panel finds the requirements of Policy ¶4(a)(i) satisfied.
The Panel finds Complainant has met is burden of proof by making a prima facie case against Respondent. Previous panels have found the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name once Complainant has met its prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). However, when Respondent fails to file an answer to the initial complaint the Panel may assume Respondent lacks all rights or legitimate interests in the dispute domain name. See 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.”). Nonetheless, this Panel will still examine the record in its entirety to ascertain whether Respondent does in fact hold rights or the legitimate interests in the disputed domain name according the factors enumerated in Policy ¶4(c).
Complainant contends Respondent is not commonly known by the domain name <microsoftkinect.com>. Respondent has brought forth no evidence to rebut this contention. The WHOIS information identifies the registrant as “Micro Kinect.” While Respondent appears to be commonly known by the disputed domain name with the WHOIS information, the Panel finds Respondent has failed to provide any further evidence and, therefore, Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also 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).
Complainant also contends Respondent is not engaging in any bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The <microsoftkinect.com> domain name resolves to an error message. The Panel finds Respondent’s failure to use the disputed domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <microsoftkinect.com> domain name according to Policy ¶4(c)(i) and Policy ¶4(c)(iii) respectively. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); see also 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).
The Panel finds the requirements of Policy ¶4(a)(ii) satisfied.
The Panel notes the examples of bad faith registration and use prescribed in Policy ¶4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges Respondent’s <microsoftkinect.com> domain name does not resolve to an active website. The Panel finds Respondent’s failure to make an active use (which is a slightly larger issue than merely maintaining a website, but that is the easiest use for a third party to check) is evidence of bad faith registration and use under Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy).
The Panel finds the requirements of Policy ¶4(a)(iii) 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 <microsoftkinect.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 24, 2011
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