Microsoft Corporation v. guy Tibbert a/k/a Varies - just send to address
Claim Number: FA1202001429406
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is guy Tibbert a/k/a Varies - just send to address (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names at issue are <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com>, registered with ENOM, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 14, 2012; the National Arbitration Forum received payment February 14, 2012.
On February 15, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@kinectchipped.com, postmaster@kinectgamesonline.com, postmaster@kinectmodding.com, postmaster@kinectupgrade.com, and postmaster@kinectupgrades.com. Also on February 21, 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.
No Response or Additional Submissions were received.
On March 26, 2012, 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Complainant first announced that it would offer its KINECT sensors June 13, 2010.
2. Respondent registered the disputed domain names June 16, 2010.
3. Complainant owns trademark registrations for the KINECT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,072,676 filed April 26, 2010; registered December 20, 2011) and the Hong Kong Intellectual Property Office (“HKIPO”) (Reg. No. 301,599,599 registered April 28, 2010).
4. Respondent’s disputed domain names are confusingly similar to Complainant’s KINECT mark.
5. Respondent is not commonly known by the disputed domain names.
6. Respondent’s disputed domain names formerly resolved to the <parlouruk.com> website, which contains adult-oriented material.
7. The disputed domain names currently resolve to an unrelated, third-party website.
8. Respondent had actual and constructive knowledge of Complainant’s KINECT mark.
B. Respondent did not submit a Response in this proceeding.
Complainant established that it has rights in the mark contained in its entirety in the disputed domain names.
These legal rights were established by registration with the appropriate national and international authorities in the United States and Hong Kong.
Respondent registered domain names that are confusingly similar to Complainant’s protected marks.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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."
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.
(4) 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.”).
Complainant provides evidence that it owns trademark registrations for its KINECT mark with the USPTO (Reg. No. 4,072,676 filed April 26, 2010; registered December 20, 2011) and the HKIPO (Reg. No. 301,599,599 registered April 28, 2010). The Panel notes that Respondent resides or operates in Great Britain. A complainant is not required to register its mark within the country in which the respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant owns rights in the KINECT mark, dating back to the USPTO filing date of April 26, 2010. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant urges that Respondent’s <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names are confusingly similar to Complainant’s KINECT mark. Complainant claims that Respondent only adds descriptive terms to Complainant’s KINECT mark. The Panel notes that the disputed domain names also contain the generic top-level domain (“gTLD”) “.com.” The Panel finds that the additions of descriptive terms and a gTLD do not adequately distinguish the disputed domain names from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); 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).
Respondent made no contentions relative to Policy ¶ 4(a)(i).
Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s KINECT mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case to supports its allegations that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once Complainant does so, as Complainant has done here, then the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant references the WHOIS information, which identifies the domain name registrant as “Tibbert a/k/a Varies – just send to address,” as evidence that Respondent is not known by the disputed domain names. Complainant asserts that Respondent is not affiliated with Complainant and is not licensed to use Complainant’s KINECT mark. The Panel notes that Respondent did not contradict any of Complainant’s arguments because Respondent failed to respond to this case. Thus, the Panel finds that Respondent is not commonly known by the <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names under an analysis 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also contends that Respondent’s <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names formerly resolved to the <parlouruk.com> website that features adult-oriented content. Complainant argues that providing adult-oriented content is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). The Panel agrees and finds that Respondent has not bona fide offering of goods or services or legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers).
Complainant also maintains that after Complainant contacted Respondent about these disputed domain names, then Respondent changed the website that the disputed domain names resolved to and Complainant claims that the current resolving website is owned by a third-party that is not related to Complainant or Respondent. Complainant did not provide a screen shot for the current resolving website and did not state what type of website to which the disputed domain names resolve. Nevertheless, the Panel finds that Respondent’s use of the disputed domain name to resolve to an unrelated, third-party website is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Respondent made no contentions relative to Policy ¶ 4(a)(ii).
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).
The Panel notes that 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 go beyond the parameters of Policy ¶ 4(b) to determine bad faith. 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 focuses on the prior resolving website as evidence of Respondent’s bad faith registration and use. Complainant argues that the disputed domain names formerly resolved to a website that provided adult-oriented content. Complainant argues that such content is evidence of bad faith registration and use. The Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to adult-oriented websites).
Complainant also contends that Respondent acted opportunistically in bad faith by registering and using the disputed domain names. Given the closeness in time of Complainant’s first announcement about its KINECT product on June 13, 2010 and Respondent’s quick registration of multiple disputed domain names on June 16, 2010, bearing the mark, Respondent’s actual knowledge of Complainant’s rights in the mark seems clear. Based on this evidence, the Panel finds that Respondent registered and used the <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names in 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 Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Complainant argues, in fact, that Respondent had actual and/or constructive knowledge of Complainant's rights in the KINECT mark, noting that Respondent registered the confusingly similar disputed domain names three days after Complainant made an announcement about its KINECT product. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent’s conduct shows actual knowledge of Complainant's mark and rights and therefore the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent made no contentions relative to Policy ¶ 4(a)(iii).
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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinectchipped.com>, <kinectgamesonline.com>, <kinectmodding.com>, <kinectupgrade.com>, and <kinectupgrades.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 9, 2012.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page