Microsoft Corporation v. Edward Lee
Claim Number: FA1201001426106
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Edward Lee (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <halo4beta.net>, registered with Name.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 24, 2012, Name.com confirmed by e-mail to the National Arbitration Forum that the <halo4beta.net> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2012 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@halo4beta.net. Also on January 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”), for its HALO mark (including Reg. No. 2,598,381, registered July 23, 2002).
Complainant uses its HALO trademark in connection with its science fiction video game “HALO,” exclusive to Complainant’s XBOX game platform.
Complainant first launched its HALO series of games in 2001, and the fourth installment in Complainant’s HALO franchise, called “HALO 4,” was announced to the public on June 6, 2011.
Respondent registered the <halo4beta.net> domain name on June 15, 2011.
The disputed domain name resolves to a website that purports to offer Internet users a “HALO 4 beta key installer” for Complainant’s new HALO game.
Internet users visiting the resolving site are advised that they must complete third-party offers and surveys in order to receive the beta key installer.
Complainant has not released a beta version of HALO 4 at this time and no beta key installers exist for HALO 4.
Respondent’s <halo4beta.net> domain name is confusingly similar to Complain-ant’s HALO mark.
Respondent is not commonly known by the <halo4beta.net> domain name.
Respondent is not affiliated with Complainant, and is not an authorized vendor, supplier or distributor of Complainant’s goods and services.
Complainant has never licensed Respondent to use its HALO trademark.
Respondent does not have any rights to or legitimate interests in the domain name <halo4beta.net>.
Respondent registered and uses the <halo4beta.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the HALO trademark under Policy ¶ 4(a)(i) by virtue of its registrations of the mark with a national trademark authority, the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant had submitted evidence of its registration of a mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <halo4beta.net> domain name is confusingly similar to Complain-ant’s HALO mark. The disputed domain name combines Complainant’s HALO mark with the number “4,” the descriptive term “beta,” which references pre-release software, and the generic top-level domain (“gTLD”) “.net.” These additions made to the mark in forming the domain name, fail to remove the domain from the realm of confusing similarity. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that a respondent’s domain name <go2AOL.com> was confusingly similar to a complainant’s AOL mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); further see Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
Therefore, the Panel finds that Respondent’s <halo4beta.net> domain name is confusingly similar to Complainant’s HALO trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <halo4beta.net> domain name. Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or interests. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the <halo4beta.net> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <halo4beta.net> domain name, that Respondent is not affiliated with Complainant, that Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services, and that Complainant has never licensed Respondent to use its HALO mark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Edward Lee,” which does not resemble the disputed domain name. On this record we conclude that Respondent is not commonly known by the disputed domain name so as to have established that it has rights to the domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the domain name <lilpunk.com>, and so had no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a com-plainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s use of the <halo4beta.net> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, in that the domain name resolves to a website that purports to offer the “beta key installer” for Complainant’s HALO 4 video game, and that Complainant has not released a beta version of HALO 4, and that no legitimate installation keys is available. Complainant further alleges, again without objection from Respondent, that when Internet users attempt to access the promised HALO 4installation key, they are instructed that their installation key is locked until they participate in third-party offers and surveys. In the circum-stances here presented, we may comfortably presume that Respondent benefits financially by receiving affiliate fees from the described third parties. On these facts we conclude that Respondent is not making either a bona fide offering of goods or services by means of the disputed domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, a Respondent’s use of the domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that a respondent lacked rights to and legitimate interests in a disputed domain name where it was used to solicit the completion of a survey by Internet users).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The <halo4beta.net> domain name is confusingly similar to Complainant’s HALO trademark. Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv) in that Respondent attempts to benefit commercially from Internet users’ confusion as to the possibility of Complainant’s affiliation with the domain name. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith registration and use where the domain name there in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a disputed domain name resolved to a website offering visitors gift cards in exchange for completing surveys and providing personal information).
It is also significant that Respondent registered the <halo4beta.net> domain name on June 15, 2011, only days after Complainant had publicly announced that it would be releasing HALO 4. This strongly suggests that Respondent’s registration and use of the domain name has been done in bad faith within the contemplation of Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a respondent’s registration of the domain name <seveballesterostrophy.com> at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 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.”).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <halo4beta.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 6, 2012
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