Microsoft Corporation v. Ashlyn Brown
Claim Number: FA1105001387342
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ashlyn Brown (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox-live-card.net>, registered with FastDomain.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2011; the National Arbitration Forum received payment on May 5, 2011.
On May 5, 2011, FastDomain confirmed by e-mail to the National Arbitration Forum that the <xbox-live-card.net> domain name is registered with FastDomain and that Respondent is the current registrant of the name. FastDomain has verified that Respondent is bound by the FastDomain 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 May 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@xbox-live-card.net. Also on May 6, 2011, 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 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <xbox-live-card.net> domain name is confusingly similar to Complainant’s XBOX LIVE mark.
2. Respondent does not have any rights or legitimate interests in the <xbox-live-card.net> domain name.
3. Respondent registered and used the <xbox-live-card.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a worldwide leader in computer and gaming software and services. Complainant began using its XBOX mark in 1998 in connection with its television and video converter boxes. Complainant launched its XBOX video gaming system in 2001, and subsequently introduced its XBOX LIVE service in 2002. Complainant owns numerous trademark registrations worldwide for its XBOX and XBOX LIVE marks. Complainant’s trademark registrations for its XBOX mark include those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,611,235 issued August 6, 2001), and the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,646,465 issued November 5, 2002). Complainant’s trademark registrations for its XBOX LIVE mark include those with the OHIM (e.g., Reg. No. 2,866,143 issued March 1, 2004), and the USPTO (e.g., Reg. No. 2,902,268 issued November 9, 2004).
Respondent, Ashlyn Brown, registered the <xbox-live-card.net> domain name on April 10, 2010. Respondent’s disputed domain name resolves to a website that features Complainant’s trademarks and logos and purports to sell codes for access to Complainant’s XBOX LIVE service, as well as codes for competing online gaming services.
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 submitted several pages of trademark registrations that it holds worldwide for its XBOX (e.g., OHIM Reg. No. 1,611,235 issued August 6, 2001); (e.g. USPTO Reg. No., 2,646,465 issued November 5, 2002), and XBOX LIVE marks (e.g. OHIM Reg. No., 2,866,143 issued March 1, 2004); (e.g., USPTO Reg. No. 2,902,268 issued November 9, 2004). The Panel finds that Complainant’s worldwide trademark registrations with several governmental entities is more than sufficient to establish its rights in the XBOX and XBOX LIVE marks under Policy ¶ 4(a)(i). See 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)); see also 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).
Complainant alleges that the <xbox-live-card.net> domain name is confusingly similar to Complainant’s XBOX LIVE mark. Complainant notes that the domain name contains its entire XBOX LIVE mark while adding a hyphen between the terms of its mark, as well as a hyphen and the generic term “card” and the generic top-level domain (“gTLD”) “.net.” Complainant argues that the additional elements of the domain name are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s mark. The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <xbox-live-card.net> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel assumes that Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan 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.”). The Panel, however, will examine the evidence and arguments on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is neither commonly known by the disputed domain name or authorized to use Complainant’s XBOX or XBOX LIVE marks in any way. Complainant notes that the WHOIS information for the disputed domain name identifies “Ashlyn Brown” as the registrant, which Complainant argues is not similar to the <xbox-live-card.net> domain name. Based upon Complainant’s submitted evidence and arguments, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant contends that Respondent’s disputed domain name resolves to a website that purports to sell codes for access to Complainant’s XBOX LIVE service, as well as codes to competing online gaming providers. Complainant argues that Respondent uses its XBOX and XBOX LIVE marks prominently throughout its website in an effort to pass itself off as Complainant. Complainant further argues that attempting to pass oneself as a trademark holder is not a legitimate use of a domain name. The Panel finds that Respondent’s use of the disputed domain name as evidenced by Complainant’s submissions, does not constitute 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s website promotes a competing online gaming system, and argues that such use disrupts Complainant’s business. Further, Complainant has shown that Respondent is using the domain name at issue to offer access codes and cards for Complainant’s gaming system, which the Panel determines disrupts Complainant’s legitimate offering of the same product. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also 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).”).
Lastly, Complainant contends that Respondent, by incorporating Complainant’s XBOX and XBOX LIVE marks in the domain name while using Complainant’s logos, creates the false impression that the resolving website originates from or is sponsored by Complainant. Complainant contends that such use of its marks is resulting in the unfair and opportunistic commercial benefit to Respondent through its sales of Complainant’s access codes and cards, as well as the same or similar products of Complainant’s competitors. Complainant submits that such use and commercial gain through the confusingly similar domain name is evidence that Respondent registered and is using the domain name in bad faith. The Panel agrees and finds that Respondent’s use of the disputed domain name as described and evidenced by Complainant in its submissions is further evidence of bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
The Panel finds that 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 <xbox-live-card.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 13, 2011
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