Microsoft Corporation v. The Private Whois Privacy Service
Claim Number: FA1302001484502
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is The Private Whois Privacy Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox-gold.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 February 11, 2013; the National Arbitration Forum received payment on February 11, 2013.
On February 11, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <xbox-gold.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY 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 February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2013 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-gold.com. Also on February 12, 2013, 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 March 22, 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 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
Complainant contends as follows:
Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations (for example Reg. No. 2,646,465 registered on Nov. 5, 2002) for the XBOX mark. The mark is used in conjunction with Complainant’s business of selling video game hardware and software. Likewise, Complainant has also registered the XBOX mark in Respondent’s listed location—China with State Administration for Industry and Commerce (“SAIC”), (Reg. No. 1,698,267 registered on Jan. 14, 2002).
Respondent’s <xbox-gold.com> domain name takes the XBOX mark and adds a hyphen, the generic top-level domain (“gTLD”) “.com,” and the generic term “gold.” The term “gold” is especially confusing as it relates directly to a type of service account that Complainant offers to its customers: Xbox Live Gold.
Respondent is not commonly known by any of Complainant’s marks. Respondent is not affiliated with Complainant in any way, nor has Complainant otherwise authorized Respondent’s use of its marks in domain names. The WHOIS information currently identifies the domain name’s registrant as “The Private Whois Privacy Service.”
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of this <xbox-gold.com> domain name. The domain name resolves to a pay-per-click advertisement/hyperlink website. Internet users who visit this domain name are directed towards a variety of hyperlinks to competing software and gaming platforms.
Respondent’s promotion of Complainant’s competitors on the <xbox-gold.com> domain name’s resolving website is a bad faith disruption of Complainant’s business.
Respondent is engaged in a bad faith venture to generate profits by way of confusing Internet users who visit the <xbox-gold.com> domain name into clicking through hyperlinks to Complainant’s competitors. Respondent seeks to take advantage of the goodwill generated under the XBOX mark to enhance Internet users’ confusion, and therefore enhance the likelihood that Internet users will mistakenly click on the hyperlinks on the disputed domain name. Respondent is receiving advertisement profits each time an Internet user clicks on the hyperlinks.
Respondent had knowledge of Complainant’s rights in the mark prior to registering the domain name. Respondent’s knowledge is clear from the fact that the <xbox-gold.com> domain name combines the XBOX mark with the name of one of the two levels of Complainant’s XBOX LIVE online services. Furthermore, numerous links on the disputed domain name make explicit reference to the XBOX mark and the products sold under the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns registered trademarks for XBOX in the United States, China, and elsewhere throughout the world.
Respondent is not affiliated with Complainant and had not been authorized to use the XBOX mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in XBOX.
The <xbox-gold.com> domain name addresses a website that displays hyperlinks to Complainant’s competition as well as to other third-party websites.
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 USPTO trademark registrations for the XBOX mark in conjunction with its business of selling video game hardware and software. Complainant has also registered the XBOX mark in China and elsewhere. Registration of the XBOX mark with one or more national trademark registrars is compelling evidence of Complainant’s rights in a 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).”).
In forming the domain name Respondent takes the XBOX mark and adds a hyphen along with the generic term “gold” and then appends the top level domain name “.com” thereto. The term “gold” directly relates to a type of service account that Complainant offers to its customers: Xbox Live Gold. The addition of a hyphen or a top level domain name are never significant changes to a trademark under the Policy and the use of the term “gold” does nothing to differentiate the domain name from Complainant’s mark especially considering that Complainant uses that same term to market service accounts in conjunction with its XBOX products. 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Therefore, the Panel concludes that Respondent’s <xbox-gold.com> domain name is confusingly similar to Complainant’s XBOX mark under Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the 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 an 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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “The Private Whois Privacy Service” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Moreover, Respondent’s at-issue domain name addresses a pay-per-click advertisement/hyperlink website. Visitors to the website are directed to a variety of hyperlinks to businesses that compete with Complainant as well as to unrelated businesses. Using the <xbox-gold.com> domain name in this manner is neither a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii), nor a bona fide use under Policy ¶ 4(c)(i). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Of the links displayed on Respondent’s <xbox-gold.com> website, one of the links directs visitors to “Play Coasterville-Free,” while another link offers to take the visitor to “Apps on Google Play.” Respondent’s promotion of Complainant’s competitors on the <xbox-gold.com> website constitutes a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is also attempting to generate revenue by confusing Internet users into believing the <xbox-gold.com> website is sponsored or otherwise affiliated with Complainant so that he or she will be mistakenly motivated to navigate thereto. Once on the sham website the accidental visitor is now in a position to click on any one of the website’s several pay-per-click links. Respondent’s registration and use of the confusingly similar at-issue domain name to abet its deceptive scheme demonstrates bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Finally, prior to registering the at-issue domain name Respondent had actual knowledge of Complainant’s rights in the XBOX mark. Such prior knowledge is clear from the fact that the <xbox-gold.com> domain name combines the XBOX mark with the name of one of the levels of Complainant’s XBOX LIVE online services. Furthermore, numerous links on the <xbox-gold.com> website make explicit reference to the XBOX mark and/or the products sold under that trademark. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
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-gold.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 24, 2013
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