Microsoft Corporation v. liang lidong / lianglidong
Claim Number: FA1306001504076
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is liang lidong / lianglidong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xboxsports.info>, registered with Web Commerce Comm. 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.
Darryl C. Wilson, 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.
On June 10, 2013, Web Commerce Comm. Ltd confirmed by e-mail to the National Arbitration Forum that the <xboxsports.info> domain name is registered with Web Commerce Comm. Ltd and that Respondent is the current registrant of the name. Web Commerce Comm. Ltd has verified that Respondent is bound by the Web Commerce Comm. 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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.info. Also on June 11, 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 July 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant
A. Complainant contends that it has rights in the XBOX mark, used in connection with a video game entertainment system. Complainant is the owner of registrations for the XBOX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,646,465 registered Nov. 5, 2002) and the State Administration for Industry and Commerce of the People's Republic of China (“SAIC”) (e.g., Reg. No. 1,698,267 registered Jan. 14, 2002). See Complainant’s Exhibit E.
B. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <xboxsports.info> domain name contains the XBOX mark in its entirety, along with the generic or descriptive term “sports” and the generic top-level domain (“gTLD”) “.info.”
C. Respondent does not own any rights or have any legitimate interests in the <xboxsports.info> domain name.
a. The WHOIS record for the disputed domain name identifies Respondent as “liang lidong/lianglidong.” Respondent is not affiliated with Complainant, nor is Respondent licensed to use Complainant’s XBOX mark.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website with links to third-party sites. See Complainant’s Exhibit F. Complainant presumes that Respondent receives pay-per-click revenue from these links. The website promotes products unrelated to Complainant as well as those of Complainant’s competitors.
c. Respondent has also listed the disputed domain name for a sale price of $1,000. See Complainant’s Exhibit F.
D. Respondent registered and is using the <xboxsports.info> domain name in bad faith.
a. Respondent is offering the disputed domain name for sale at a price of $1,000.
b. Respondent’s promotion of Complainant’s competitors, such as Google, disrupts Complainant’s business.
c. By promoting both unrelated and competing business using Complainant’s XBOX trademark and presumably obtaining pay-per-click revenue, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark by misleading and diverting Internet users to the disputed domain name.
d. Respondent had knowledge of Complainant’s mark because of its fame and familiarity to countless consumers. Complainant has sold more than 77 million XBOX 360 consoles and has more than 46 million Xbox LIVE members. See Complainant’s Exhibit C.
E. Respondent registered the <xboxsports.info> domain name on August 3, 2012.
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is Microsoft Corporation which list its address as Redmond, WA, USA. Microsoft is a worldwide leader in software, services, and solutions. Complainant was founded in 1975 and uses, and has registered, various well-known marks in conjunction with its business, including the mark XBOX. Complainant used, and domestically as well as internationally registered, the XBOX mark at least as early as 2002.
Respondent is liang lidong/lianglidong which list its address as Bejing, China. Respondent’s registrar’s address is listed as Kuala Lumpur, Malaysia. Respondent registered the disputed domain name on August 3, 2012.
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 contends that it has rights in the XBOX mark, used in connection with a video game entertainment system. Complainant states that it is the owner of registrations for the XBOX mark with the USPTO (e.g., Reg. No. 2,646,465 registered Nov. 5, 2002) and the SAIC (e.g., Reg. No. 1,698,267 registered Jan. 14, 2002). See Complainant’s Exhibit E. The Panel finds that Complainant has rights to the XBOX mark because it has multiple trademark registrations in various countries, including in China, the same jurisdiction in which Respondent seemingly operates. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant states that Respondent’s <xboxsports.info> domain name contains the XBOX mark in its entirety, along with the generic or descriptive term “sports” and the gTLD “.info.” The Panel finds that the addition of the generic or descriptive term “sports” does not distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel also finds that the addition of the gTLD “.info” is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Respondent’s <xboxsports.info> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent does not own any rights or have any legitimate interests in the <xboxsports.info> domain name. Complainant notes that the WHOIS record for the disputed domain name identifies Respondent as “liang lidong/lianglidong.” Complainant asserts that Respondent is not affiliated with Complainant, nor is Respondent licensed to use Complainant’s XBOX mark. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent was not authorized by Complainant to use the XBOX mark, is not recognized in the WHOIS information nor other evidence on record, and therefore is not commonly known by the <xboxsports.info> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainants states that the disputed domain name resolves to a website with links to third-party sites. See Complainant’s Exhibit F. Complainant presumes that Respondent receives pay-per-click revenue from these links. Complainant notes that the website promotes products unrelated to Complainant as well as those of Complainant’s competitors. Panels have found that displaying third-party links and receiving pay-per-click revenue using a confusingly similar domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel finds that Respondent’s use of the <xboxsports.info> domain name does not constitute 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).
Complainant also alleges that Respondent has listed the disputed domain name for a sale price of $1,000. See Complainant’s Exhibit F. Panels have found that a respondent’s willingness to sell a domain name suggests that the respondent does not have legitimate rights or interests. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). The Panel finds that Respondent’s intention to sell the disputed domain name is evidence of Respondent’s lack of rights or legitimate interests in the <xboxsports.info> domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and is using the <xboxsports.info> domain name in bad faith. Complainant asserts Respondent is offering the disputed domain name for sale at a price of $1,000. The Panel notes that Respondent’s offer for sale is posted at the top of the resolving website. See Complainant’s Exhibit F. Panels have found that an attempt to sell a disputed domain name is evidence of bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). The Panel finds that Respondent’s attempt to sell the disputed domain name is evidence of bad faith pursuant to Policy ¶4(b)(i).
Complainant asserts that Respondent’s promotion of Complainant’s competitors, such as Google, disrupts Complainant’s business. Panels have found that displaying links to a complainant’s competitors constitutes bad faith under Policy ¶4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent registered and is using the <xboxsports.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant claims that by promoting both unrelated and competing businesses using Complainant’s XBOX trademark and presumably obtaining pay-per-click revenue, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark by misleading and diverting Internet users to the disputed domain name. Panels have found that such conduct is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel finds that Respondent registered and is using the <xboxsports.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the < xboxsports.info > domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 16, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page