Microsoft Corporation v. DevHolden LLC / Dustin Holden
Claim Number: FA1307001509834
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is DevHolden LLC / Dustin Holden (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinectsportsrivals.com>, registered with DYNADOT, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 16, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <kinectsportsrivals.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC 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 July 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@kinectsportsrivals.com. Also on July 18, 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 August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s < kinectsportsrivals.com > domain name, the domain name at issue, is confusingly similar to Complainant’s KINECTmark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1975 and is a worldwide leader in software, services, and solutions. Complainant is the creator and owner of the XBOX video game entertainment system, along with associated software and accessories. KINECT is Complainant’s brand name for a breakthrough sensor accessory for one of the XBOX systems. It was announced at an event on June 13, 2010, and immediately thereafter there was widespread, global press coverage of the KINECT mark, including articles published throughout the world, from sources including ABC, BBC News, CNN, The Washington Post, and more. Complainant has since acquired trademark registrations for the KINECT mark, including a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,072,676 registered Dec. 20, 2011). Respondent’s <kinectsportsrivals.com> domain name is confusingly similar to Complainant’s KINECT mark. The inclusion of Complainant’s mark along with a descriptive phrase and generic top-level domain (“gTLD”) do not negate the commonality and confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the KINECT mark, as evidenced by the WHOIS record’s listing of “DevHolden, LLC/Dustin Holden” as the domain name registrant and Respondent’s lack of permission from Complainant to use the KINECT mark in any manner.
Respondent’s lack of rights and legitimate interests is further demonstrated by the fact that Respondent has failed to use the <kinectsportsrivals.com> domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website that contains graphics and music purporting to advertise “Kin Ect’s Port Srivals” and the “Third Annaul (sic) Event – September 1st to the 4th.” Complainant notes that there is no evidence of any prior event with this name, and Respondent is simply using the disputed domain name to obtain ticket revenues for an event that is unrelated to Complainant. Seeking to promote unrelated goods or services by using Complainant’s famous trademark does not constitute a use which would give Respondent rights or legitimate interests in the <kinectsportsrivals.com> domain name. Respondent adopted the <kinectsportsrivals.com> domain name, incorporating Complainant’s KINECT mark, in order to create an association with Complainant and its products and services. Respondent uses this attraction of Internet users searching for Complainant to market ticket sales to Respondent’s own, unrelated event.
On June 10, 2013, Complainant announced its latest game for the XBOX ONE system called “Kinect Sports Rivals,” a name identical to the substantive portion of the disputed domain name. On that same day, Respondent registered the <kinectsportsrivals.com> domain name. Respondent clearly had knowledge of Complainant’s rights in the KINECT mark prior to the registration of the <kinectsportsrivals.com> domain name. At that time the KINECT mark was familiar to countless consumers worldwide. Additionally, Respondent registered the disputed domain name on the very same day that Complainant released an announcement of a new KINECT game, Kinect Sports Rivals, which makes up the second-level portion of the disputed domain name. Additionally, Complainant’s trademark registrations provided constructive knowledge of the mark’s ownership.
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 was founded in 1975 and is a worldwide leader in software, services, and solutions. Complainant is the creator and owner of the XBOX video game entertainment system, along with associated software and accessories. KINECT is Complainant’s brand name for a breakthrough sensor accessory for one of the XBOX system which was announced at an event on June 13, 2010. Immediately thereafter there was widespread, global press coverage of the KINECT mark, including articles published throughout the world, from sources including ABC, BBC News, CNN, The Washington Post, and more. Complainant has since acquired trademark registrations for the KINECT mark, including a registration with the USPTO (Reg. No. 4,072,676 registered Dec. 20, 2011). As such, Complainant has rights in the KINECT mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <kinectsportsrivals.com> domain name is confusingly similar to Complainant’s KINECT mark. The inclusion of Complainant’s mark along with a descriptive phrase and gTLD do not negate the commonality and confusing similarity. Added descriptive terms and a gTLD fail to create any meaningful distinction between the disputed domain name and the mark within the domain. 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 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.”). As such, the Panel finds that Respondent’s <kinectsportsrivals.com> domain name is confusingly similar to the KINECT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the KINECT mark, as evidenced by the WHOIS record’s listing of “DevHolden, LLC/Dustin Holden” as the domain name registrant and Respondent’s lack of permission from Complainant to use the KINECT mark in any manner. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the Panel held that the WHOIS record for a domain name and the complainant’s treatment of the use of the mark by the respondent are evidence of whether a respondent is commonly known by the disputed domain name. Therefore, Respondent is not commonly known by the <kinectsportsrivals.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s lack of rights and legitimate interests is further demonstrated by the fact that Respondent has failed to use the <kinectsportsrivals.com> domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant notes that the disputed domain name resolves to a website that contains graphics and music purporting to advertise “Kin Ect’s Port Srivals” and the “Third Annaul (sic) Event – September 1st to the 4th.” Complainant claims that there is no evidence of any prior event with this name, and Respondent is simply using the disputed domain name to obtain ticket revenues for an event that is unrelated to Complainant. Seeking to promote unrelated goods or services by using Complainant’s famous trademark does not constitute a use which would give Respondent rights or legitimate interests in the <kinectsportsrivals.com> domain name. The Panel finds that Respondent’s unrelated use of the <kinectsportsrivals.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent adopted the <kinectsportsrivals.com> domain name, incorporating Complainant’s KINECT mark, in order to create an association with Complainant and its products and services. Further, Respondent uses this attraction of Internet users searching for Complainant to market ticket sales to Respondent’s own, unrelated event. Panels have found that the attempt to take commercial advantage of Internet users by creating a likelihood of confusion with the complainant is evidence of bad faith. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Therefore, this Panel finds that Respondent registered the <kinectsportsrivals.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s registration of the <kinectsportsrivals.com> domain name is a product of opportunistic bad faith. On June 10, 2013, Complainant announced its latest game for the XBOX ONE system called “Kinect Sports Rivals,” a name identical to the substantive portion of the disputed domain name. On that same day, Respondent registered the <kinectsportsrivals.com> domain name. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel held that the registration of a confusingly similar domain name in close proximity to the announcement of a related product or service by the complainant demonstrated opportunism. Therefore, the Panel finds that Respondent registered and began using the <kinectsportsrivals.com> domain name with opportunistic bad faith under Policy ¶ 4(a)(iii).
Lastly, Respondent clearly had knowledge of Complainant’s rights in the KINECT mark prior to the registration of the <kinectsportsrivals.com> domain name. At that time the KINECT mark was familiar to countless consumers worldwide, and Complainant’s trademark registrations provided constructive knowledge of the mark’s ownership. Additionally, Respondent registered the disputed domain name on the very same day that Complainant released an announcement of a new KINECT game, Kinect Sports Rivals, which makes up the second-level portion of the disputed domain name. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinectsportsrivals.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 16, 2013
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