Microsoft Corporation v. lianglidong / lianglidong
Claim Number: FA1306001504075
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Lianglidong / lianglidong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxsports.org> registered with eName Technology Co., 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013. The Complaint was submitted in both English and Chinese.
On June 12, 2013, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <xboxsports.org> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology 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 19, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 9, 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@xboxsports.org. Also on June 19, 2013, the Chinese language 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 July 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the XBOX mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 registered November 5, 2002).
ii. Complainant owns the XBOX mark through international trademark agencies, such as China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,698,267 registered January 14, 2002).
iii. Complainant was founded in 1975 and is a worldwide leader in software and related services. Complainant first began using the XBOX mark in 2001 in connection with video game entertainment and associated software and accessories. Complainant has continued to use and advertise the XBOX mark internationally such that the mark is now famous.
i. Policy ¶ 4(a)(i)
1. The domain <xboxsports.org> is confusingly similar to Complainant’s XBOX mark as it is comprised of Complainant’s mark with the mere addition of the generic or descriptive term “sports” and the gTLD “.org.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the XBOX mark as shown by the WHOIS record, nor is Respondent licensed or otherwise authorized to use the XBOX mark.
2. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name resolves to a page displaying links to third-party websites where Respondent presumably receives pay per click revenue.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is further evidenced by Respondent’s offer to sell the disputed domain name.
2. Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business, providing evidence of bad faith.
3. By promoting links to Complainant’s competitors as well as unrelated businesses using the XBOX trademark, Respondent has attempted to commercial benefit, presumably through click through revenue, from the goodwill associated with Complainant’s mark.
4. Respondent’s registration of the disputed domain name with knowledge of Complaint’s rights is evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant claims to own the XBOX mark through its trademark registration with the USPTO (e.g., Reg. No. 2,646,465 registered November 5, 2002). Additionally, Complainant claims to owns the XBOX mark through international trademark agencies, such as China’s SAIC (e.g., Reg. No. 1,698,267 registered January 14, 2002). The Panel notes Respondent is a resident of China, according to the WHOIS record. Previous panels have found that a complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s right in the mark. 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).”). As such, the Panel finds that Complainant’s USPTO and SAIC registrations establish Complainant’s rights in the XBOX mark pursuant to Policy ¶ 4(a)(i).
Complainant argues the domain name <xboxsports.org> is confusingly similar to Complainant’s XBOX mark as it is comprised of Complainant’s mark with the mere addition of the generic or descriptive term “sports” and the gTLD “.org.” Previous panels have determined that the addition of a generic or descriptive term to a Complainant’s mark is insufficient to distinguish the disputed domain from the mark at issue. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Additionally, previous panels have found that the inclusion of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Therefore, the Panel finds that Respondent’s disputed domain <xboxsports.org> is confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i)).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent is not commonly known by the XBOX mark as shown by the WHOIS record, nor is Respondent licensed or otherwise authorized to use the XBOX mark. Complainant notes that the WHOIS record identifies Respondent as “lianglidong/lianglidong.” As Respondent is not authorized to use the disputed mark, and the WHOIS record does not suggest Respondent is commonly known by the domain name at issue, the Panel finds that Respondent is not commonly known by the <xboxsports.org> domain under Policy ¶ 4(a)(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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark)
Complainant further argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends the disputed domain name resolves to a page displaying links to third-party websites where Respondent presumably receives pay per click revenue. Previous panels have generally found that domain names that resolve to websites that display links to third parties, including a complainant’s competitors, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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). The Panel finds that Respondent’s use of the disputed domain to display links to third-party websites, from which it presumably receiving click through fees, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant contends that Respondent’s bad faith is evidenced by Respondent’s offer to sell the disputed domain name. Complainant notes that the <xboxsports.org> domain is listed for sale at $1,000.00. The Panel notes that previous panels have found evidence of bad faith from a respondent’s general offer to sell the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name for $1,000.00 establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business, providing evidence of bad faith. Complainant notes that among the links Respondent provides on the resolving page is a link for Samsung Chromebook from Google. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant’s through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant argues that by promoting links to Complainant’s competitors as well as links to unrelated businesses using the XBOX trademark, Respondent has attempted to commercially benefit, presumably through click through revenue, from the goodwill associated with Complainant’s mark. Complainant contends such effort is evidence of bad faith. The Panel agrees and finds evidence of bad faith pursuant to Policy ¶ 4(a)(iv) because Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s XBOX mark through click through fees generated in part through links to competitors of Complainant by creating a likelihood of confusion. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims that Respondent’s registration of the disputed domain name with knowledge of Complaint’s rights is evidence of bad faith registration and use. Although previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name 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").
Complainant has proven this element.
Complainant 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.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 22, 2013
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