national arbitration forum

 

DECISION

 

Microsoft Corporation v. li zi /  li zi li zi / li zi pan / li zi pan li zi pan

Claim Number: FA1104001382743

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is li zi /  li zi li zi / li zi pan / li zi pan li zi pan (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com>, registered with Hichina Zhicheng Technology Ltd.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2011; the National Arbitration Forum received payment on April 11, 2011. The Complaint was submitted in both Chinese and English.

 

On April 11, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com> domain names are registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the names. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 April 18, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 9, 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@xboxpointsonsale.com, postmaster@xboxpoints-online.com, postmaster@xboxpointsonline.com, and postmaster@psnxboxnorton.com.  Also on April 18, 2011, the Chinese language 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 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain names that Respondent registered, <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com> , are confusingly similar to Complainant’s XBOX mark.

 

2.    Respondent has no rights to or legitimate interests in the <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com> domain names.

 

3.    Respondent registered and used the <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corporation, designs and sells software, and video game entertainment systems, among other goods and services. Complainant owns a trademark registration for the XBOX mark with the Chinese State Intellectual Property Office (“SIPO”) and the United States Patent and Trademark Office (“USPTO”), among other trademark authorities around the world, including the following:

 

SIPO

1,698,267      issued January 14, 2002;

1,956,390      issued December 7, 2002;

3,151,175      issued March 14, 2004;

 

USPTO

2,646,465      issued November 5, 2002;

2,663,880      issued December 17, 2002;

2,775,859      issued October 21, 2003;

2,817,709      issued February 24, 2004; and

2,934,666      issued March 22, 2005.

 

Respondent, li zi /  li zi li zi / li zi pan / li zi pan li zi pan, registered the <xboxpointsonline.com> domain name October 13, 2010, the <xboxpointsonsale.com> domain name December 14, 2010, the <xboxpoints-online.com> domain name  February 10, 2011, and the <psnxboxnortion.com> domain name June 1, 2011. The disputed domain names resolve to commercial websites that purport to sell codes for access to Complainant’s XBOX Live service and the competing PlayStation Network of Sony and display Complainant’s XBOX marks, logos and trade dress.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant owns a trademark registration for the XBOX mark with the Chinese SIPO and the USPTO, among other trademark authorities around the world, including the following:

 

SIPO

1,698,267      issued January 14, 2002;

1,956,390      issued December 7, 2002;

3,151,175      issued March 14, 2004;

 

USPTO

2,646,465      issued November 5, 2002;

2,663,880      issued December 17, 2002;

2,775,859      issued October 21, 2003;

2,817,709      issued February 24, 2004; and

2,934,666      issued March 22, 2005.

 

The Panel finds that these trademark registrations with national trademark authorities demonstrate that Complainant has rights in the XBOX mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). 

 

Complainant urges that Respondent’s disputed domain names are confusingly similar to Complainant’s XBOX mark. The disputed domain names make one or more of the following modifications to Complainant’s mark: the addition of the terms or abbreviations “psn,” “points,” “online,” “on,” and/or “sale,” “norton”; the addition of a hyphen; and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding generic or descriptive terms to Complainant’s mark does not distinguish the disputed domain names from Complainant’s mark. See 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 Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). The Panel also finds that adding a hyphen and a gTLD do not distinguish the disputed domain names from being confusingly similar to a mark in which Complainant has exclusive rights. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).

 

The Panel finds that Respondent’s disputed <psnxboxnorton.com>, <xboxpointsonline.com>, <xboxpoints-online.com>, and <xboxpointsonsale.com> domain names are confusingly similar to Complainant’s XBOX mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must make a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain names, which Complainant has done here. Once Complainant does so, the burden of proof shifts to Respondent to show that it does have such rights and legitimate interests under a Policy ¶ 4(a)(ii) analysis. In failing to file a Response; however, Respondent has not submitted an evidence to show rights and/or legitimate interests in the disputed domain names, permitting the Panel to presume that Respondent has none. The Panel also may take Complainant’s allegations as true. See 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.”); see also Pavillion Agency Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names). This Panel also will consider the full record according to the Policy ¶ 4(c) factors before making a determination as to Respondent’s rights and legitimate interests.

 

Complainant contends that Respondent is not affiliated with Complainant in any way and is not licensed by Complainant to use the XBOX mark. Complainant alleges that Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services. The WHOIS information for the disputed domain names identifies the registrant as “li zi /  li zi li zi / li zi pan / li zi pan li zi pan,” which is not nominally related to the disputed domain names. The Panel accordingly concludes that Respondent is not commonly known by the disputed domain names and does not possess rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

 

Complainant asserts as well that Respondent’s disputed domain names resolve to commercial websites that purport to sell codes for access to Complainant’s XBOX Live service and to Sony’s competing PlayStation Network. The Panel finds that using the disputed domain names to direct Internet users to commercial websites not affiliated with Complainant while advertising products in competition with Complainant does not comport with the Policy requirements of a bona fide offering of goods or services under ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use according to ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also contends that Respondent registered and used the disputed domain name in bad faith.  The websites resolving from Respondent’s disputed domain names purportedly offer access codes to Complainant’s XBOX Live service and Sony’s PlayStation Network. Offering access codes to products and services that compete with Complainant disrupts Complainant’s business. The Panel finds that these circumstances support findings of Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). 

 

Complainant further alleges that Respondent uses Complainant’s XBOX mark in the disputed domain names in order to attract Internet users seeking Complainant’s products. By incorporating the XBOX mark in the domain names and displaying Complainant’s logo and mark on the resolving websites, Respondent created the false impression that the websites are affiliated with or sponsored by Complainant, which creates confusion among Internet consumers. As Respondent’s websites commercially offer products for sale, Respondent likely profits from this attract-and-confuse scheme, which the Panel finds demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <xboxpointsonsale.com>, <xboxpoints-online.com>, <xboxpointsonline.com>, and <psnxboxnorton.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 24, 2011.

 

 

 

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