Microsoft Corporation v. Zuopan
Claim Number: FA1206001447775
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Zuopan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxsports.com>, registered with HANGZHOU AIMING NETWORK CO., LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 7, 2012. The Complaint was received in Chinese and English.
On June 13, 2012, HANGZHOU AIMING NETWORK CO., LTD confirmed by e-mail to the National Arbitration Forum that the <xboxsports.com> domain name is registered with HANGZHOU AIMING NETWORK CO., LTD and that Respondent is the current registrant of the name. HANGZHOU AIMING NETWORK CO., LTD has verified that Respondent is bound by the HANGZHOU AIMING NETWORK CO., 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 June 20, 2012, in accord with Paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Forum served the Chinese language Complaint (nominally titled Amended Complaint) and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 10, 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@xboxsports.com. The Chinese language Written Notice of the Complaint was also sent by post and fax on June 20, 2012.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 "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
Complainant contends as follows:
Microsoft owns numerous proprietary trademarks for its goods and services, including the world famous trademark XBOX® including registrations for the XBOX mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,646,465 registered November 5, 2002) and the Chinese State Administration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,698,267 registered January 14, 2002)..
Microsoft began using XBOX in 1998 in connection with TV and video converters. In 2001, Microsoft launched video game entertainment systems, software and accessories under the 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 January, 2012, Microsoft had sold more than 66 million XBOX 360 consoles and had nearly 40 million Xbox LIVE members.
The <xboxsports.com> domain name is confusingly similar to Complainant’s XBOX mark.
Respondent is not commonly known by the disputed domain name or by Complainant’s XBOX mark.
The WHOIS information currently identifies “Zuopan” as the domain name registrant.
The landing page for the disputed domain name displays information regarding trademark infringement and cyber-squatting that is unrelated to Complainant’s products and services under the XBOX mark.
Respondent has been operating under several aliases including, “Zhang Na” and “Xbox Phone Packaging Technology Limited.” Therefore, Respondent has engaged in a pattern of bad faith domain name registrations including in the current instance.
Respondent registered and is using the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the XBOX mark.
Respondent registered the disputed domain name on the same day that Complainant announced its intention to expand sports offerings on the XBOX platform, which is evidence of opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Microsoft has registered the XBOX, XBOX 360 and XBOX LIVE trademarks with the United States Patent and Trademark Office and around the world, including in China where Respondent purportedly resides.
XBOX is a well-known or famous mark.
Respondent registered the <xboxsports.com> domain name on June 5, 2012.
Respondent registered the disputed domain name on the same day that Complainant announced its intention to expand sports offerings on the XBOX platform.
The landing page for the at‑issue domain name displays information regarding trademark infringement and cyber-squatting that is unrelated to Complainant’s products and services under the XBOX mark.
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 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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark registrations for XBOX with the USPTO and with SAIC predating Respondent’s registration of the at‑issue domain name, as well as with numerous other registries worldwide. Complainant’s trademark registration with either of the aforementioned recognized trademark authorities conclusively demonstrates Complainant’s rights in the XBOX mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The <xboxsports.com> contains Complainant’s entire trademark with the descriptive term, “sports,” and the top level domain name, “.com,” concatenated thereto. Adding descriptive terms and a top level domain name to Complainant’s famous mark fails to distinguish the at‑issue domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also 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.”). Therefore, the Panel concludes that Respondent’s <xboxsports.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
Respondent lacks rights and legitimate interests in respect of the <xboxsports.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information currently identifies “Zuopan” as the domain name registrant and the record contains no evidence tending to show that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, Policy ¶4(c)(ii) cannot be relied upon to find Respondent has rights or interests in respective of the domain name.
Furthermore, the landing page for the at‑issue domain name displays information regarding trademark infringement and cyber-squatting that is unrelated to Complainant’s products and services under the XBOX mark. Additionally, Respondent’s information references another UDRP proceeding that Complainant recently filed regarding XBOX related domain names that were registered by Respondent under aliases. Respondent’s use of the disputed domain name in such a manner 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). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent engages in a pattern of bad faith registrations of XBOX related domain names. Respondent maintains several aliases to obscure its true identity. Respondent has used the “Zhang Na” and “Xbox Phone Packaging Technology Limited” names in registering other domain names containing the XBOX mark yet each of these domain name uses the e-mail address of “zuopan@gmail.com,” the same address as that used the registrant of <xboxsports.com>. Respondent has also been the respondent in a prior UDRP case, under the alias of Zhang Na, in which Respondent was ordered to transfer the at issue domain name therein to the complainant. See Citigroup Inc. v. zhang na, FA 1414111 (Nat. Arb. Forum Dec. 1, 2011). From the foregoing circumstances the Panel concludes that Respondent registered the <xboxsports.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent registered the <xboxsports.com> domain name on the same day Complainant released news about Complainant’s intention to expand its sports offerings for its Xbox device. The timing of this action makes it clear that Respondent purposefully registered the disputed domain name to take advantage of the XBOX related news. Respondent’s opportunistic registration of the disputed domain name is further evidence of bad faith registration and use. See 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 [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). Indeed, an identical circumstance has been previously found to suggest bad faith registration and use with regard to Complainant. See Microsoft Corp. v. Brian Fisher, FA 1436075 (Nat. Arb. Forum, May 4, 2012) (finding that Respondent registered the domain name within days of a press announcement relating to the product for which the domain name is based established bad faith under Policy ¶ 4(a)(iii)).
Finally, even without the temporal coincidence between the domain name’s registration and the Complainant’s related news regarding its expanded sports offering, the XBOX mark is so well renowned that it is near impossible to imagine anyone using the Internet, such as Respondent, being unaware of Complainant and its XBOX trademark. Respondent’s registration of the domain name to capitalize on Complainant’s press release is also consistent with Respondent’s being aware of the XBOX mark and Complainant. The Panel thus finds that Respondent must have been aware of both Complainant and its XBOX trademark at the time it registered the at‑issue domain name. Respondent’s actual knowledge of Complainant and its XBOX trademark is additional conclusive evidence of Respondent’s bad faith registration and use under 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, 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxsports.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 13, 2012
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