Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha
Claim Number: FA1211001473573
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is ABK / George Owens a/k/a Rohan / Rohan Suha (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xboxmusicpassfree.com>, <xboxlive2days.info>, and <xboxliverewards.net>, registered with Enom, Inc.
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 November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On December 3, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <xboxmusicpassfree.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 December 10, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <xboxlive2days.info> and <xboxliverewards.net> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 December 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 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@xboxmusicpassfree.com, postmaster@xboxlive2days.info, postmaster@xboxliverewards.net. Also on December 12, 2012, 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 January 11, 2013 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Microsoft Corporation, is a worldwide leader in software, services, and solutions. Complainant began using XBOX in connection with TV and video converters in 1998. Complainant launched video game entertainment systems, software, and accessories under the XBOX brand in 2002. Complainant delivers information and services relating to XBOX via its websites, including <xbox.com>.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the XBOX mark (e.g., Reg. No. 2,646,465, registered November 5, 2002) and for the XBOX LIVE mark (e.g., Reg. No. 2,902,268, registered November 9, 2004). Complainant also owns numerous trademark registrations with various trademark agencies throughout the world.
Respondent’s <xboxmusicpassfree.com>, <xboxlive2days.info>, and <xboxliverewards.net> domain names are confusingly similar to Complainant’s XBOX and/or XBOX LIVE marks as they incorporate Complainant’s XBOX or XBOX LIVE mark in its entirety. The <xboxmusicpassfree.com> domain name adds the phrase “music pass” and the generic term “free.” The <xboxlive2days.info> domain name adds the generic term “days” and the numeral “2.” The <xboxliverewards.net> domain name adds the term “rewards.” Each domain name adds a generic top-level domain (“gTLD”) “.com,” “.net,” or “.info.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s XBOX or XBOX LIVE marks, where the WHOIS information identifies “ABK / George Owens” and “Rohan / Rohan Suha” as the registrant of the disputed domain names. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s XBOX or XBOX LIVE marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent is promoting competing music services, as well as falsely offering software that generates free access codes for Complainant’s pay services, disrupting Complainant’s business. Respondent causes the public to associate the Respondent offending websites with Complainant and malicious download links appearing on, or accessed through, such websites.
Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s XBOX and XBOX LIVE marks.
Respondent registered the disputed domain names with knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Microsoft has registered the XBOX, XBOX LIVE trademarks with the United States Patent and Trademark Office and with other authorities worldwide.
XBOX is a well-known or famous mark.
Respondent is ABK/George Owens aka Rohan/Suha/Rohan Suha.
Respondent is not authorized to use Complainant’s trademarks.
Respondent registered each of the at-issue domain names subsequent to Complainant acquiring rights in Complainant’s relevant trademarks.
Respondent uses the websites addressed by the at-issue domain names to promote competing music services, as well as to falsely offer software that generates free access codes for Complainant’s pay services. Malicious download links also appear on, and may be accessed through, such 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.”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings there are multiple nominal respondents, however Complainant alleges that such persons or entities that are the nominal registrants of the domain names here at-issue are actually the same person or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
To urge the Panel that the two nominal registrants are one in-the-same, Complainant contends that:
· The nominal registrant for both <xboxliverewards.net> and <xboxlive2days.info> is Rohan Sua;
· The registrant contact for <xboxmusicpassfree.com> is ABK / George Owens ();
· The admin contact for all three domains is carolc.pua@gmail.com;
· The fax numbers for <xboxliverewards.net> and <xboxmusicpassfree.com> are the same;
· All the domains are registered with eNom;
· All the domains point to landing pages at Google’s Blogger;
· All the domains point to XBOX-related content;
· All the domains promote a purported access code generator;
· All the domains link to the same survey/offer page.
Nevertheless, these factors do not conclusively demonstrate that this proceeding’s two dissimilarly named registrants/Respondents are one-in-the-same. One important purpose of having a domain registration system is to unequivocally identify the registrant or owner of each and every domain name as a prerequisite to participating in the Internet. Domain name registries, like their counterparts for automobiles and real property, thus offer presumptively conclusive evidence of domain name ownership which may be challenged only by showing compelling evidence of actual ownership contrary to the domain name’s WHOIS record. Since in the instant case the nominal ownership of the at-issue domain names differs for one of the three domain names, and since there is nothing in the record which indicates that the registrants are nevertheless one-in-the-same except for the conclusion that might be divined from the particulars asserted by Complainant above, the Panel is reluctant to find that the domain names are “registered by the same domain name holder” pursuant to Rule ¶3(c). Having said that, the Panel also recognizes that where, as here, the respondent(s) have been duly notified of the proceeding and yet fails to respond, an inference is created that the respondent(s) admit(s) the contentions in the complaint, providing that such contentions are reasonable and are not otherwise contradicted by the record. The Panel further notes that if in the instant case the action against one of the nominal registrants were to be dismissed but maintained as to the other, Complainant would likely simply re-file the action as to the dismissed Respondent. In the end Complainant would almost certainly get the same relief as if the two nominal registrants were instead treated as one within the instant action.
It might be argued that a dismissal would nonetheless serve the end of preventing an over burdening, or complicating, of what should be a simple proceeding by allowing multiple Respondents and multiple domain names to participate in a single action. However on balance, given the particular facts of the instant case, the Panel finds that: 1) it is reasonable to find that there is some colorable evidence supporting a conclusion that the nominal Respondents are one-in-the-same; 2) that no Response was filed by either of the nominal Respondents; 2) that there is no contrary evidence on the records save the WHOIS records which indicate the Respondents are not nominally identical and; 3) that Complainant would be unnecessarily burdened by having to expend additional resources if required to re-file an action as to the dismissed party, that therefore this action should proceed as to all Respondents pursuant to Rule ¶3(c). See U.S. Auto Parts Network, Inc. v. Elias Skander / Jean Lucas / Domcharme Group et al., FA1469349 (Nat. Arb. Forum December 28, 2012 (“In the absence of any response, Panel finds that Complainant has presented sufficient evidence to allow a reasonable inference to be made that the disputed domain names are controlled by the same person or entity.”)
Each of the at-issue domain names is confusingly similar to a mark in which Complainant has rights.
Complainant’s registration of the XBOX and XBOX LIVE marks with the USPTO and with other trademark offices throughout the world is sufficient to establish its rights in these marks pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Each at-issue domain name is confusingly similar to one or more of Complainant’s trademarks. To form the <xboxmusicpassfree.com> domain name Respondent adds the phrase “music pass” (a service of the Complainant offered under the XBOX mark) and the generic term “free” to Complainant’s XBOX mark; Respondent then appends the top level domain name, “.com,” to the resulting string. These additions to Complainant’s XBOX mark do nothing to distinguish the domain name from Complainant’s trademark for the purpose of Policy ¶4(a)(i). 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); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The <xboxlive2days.info> domain name adds the generic term “days” and the numeral “2.” The “2days” refers to a 2-day XBOX LIVE pass. The term “rewards” refers to a loyalty program offered under the XBOX mark. As noted above, the addition of generic or descriptive terms or phrases is generally irrelevant to a Policy ¶ 4(a)(i) analysis as is the top level domain name. In fact, these particular added terms, like those in <xboxmusicpassfree.com>, are suggestive of Complainant and its services. Therefore, the Panel finds the <xboxlive2days.info> domain name is confusingly similar to Complainant’s trademark under Policy ¶4(a)(i). 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 Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use any of Complainant’s trademarks 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 any of the at-issue domain names.
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 there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain names, Complainant’s prima facie showing acts conclusively.
Respondent is not known by Complainant’s XBOX or XBOX LIVE marks. Respondent is not affiliated with Complainant in any way and WHOIS information identifies “ABK / George Owens” aka “Rohan / Rohan Suha” as the registrant of the disputed domain names. Moreover, there is no evidence in the record which otherwise tends to prove that Respondent is, or ever has been, known by any of the domain names. Therefore, the Panel concludes that Respondent is not commonly known by any of the at-issue domain names 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).
Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. At the time the Complainant filed the original Complaint, the landing page for the <xboxmusicpassfree.com> domain name was entitled “Xbox Music Pass – All the music you Love. Every way you want it.” The webpage featured images of Complainant’s products and XBOX logo. The page also indicated that visitors could “GET A FREE XBOX MUSIC PASS” by entering an e-mail address. If an e-mail address was then entered, the site did not provide an XBOX Music Pass but instead presented a list purported to be a “quick survey.” However, the “quick survey” actually consisted of links to third-party sites, including those of a competing music service. The links also triggered a malware warning for “Exploit Facebook Scam.”
After the original Complaint was filed, Respondent moved its site to a different host and modified its landing page to one which encourages visitors to “Download Xbox Music Pass Code Generator.” Visitors attempting to download the purported code generator are presented with a survey/offer list, which still promotes a competing music service. Respondent’s <xboxliverewards.net> and <xboxlive2days.info> domain names point to similar websites that display Complainant’s logos, images and “Download” buttons for a purported access code generator which actually lead to the survey/offer scheme employed for <xboxmusicpassfree.com>. Respondent’s use of the disputed domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Furthermore, links on the <xboxmusicpassfree.com> website attempt to download malicious software onto the Internet user’s computer. Such use of the domain name is likewise neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
Each of the at-issue domain names was registered and used in bad faith. As discussed below, multiple Policy ¶4(b)(iv) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using each of the at-issue domain names.
Respondent uses the <xboxmusicpassfree.com> website for promoting competing music services, as well as falsely offering software that generates free access codes for Complainant’s pay services. Thereby, Respondent is disrupting Complainant’s business. Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information. Moreover, Respondent’s use of the domain name to promote competing services additionally disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent attempts to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s XBOX and XBOX LIVE marks and the confusion Respondent creates concerning the source and sponsorship of the at-issue websites. Complainant shows that the at-issue domain names address websites that promote competing music services. Respondent’s use of the confusingly similar at-issue domain names to promote competing services demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA 1349611 (Nat. Arb. Forum Nov. 9, 2009) (finding “intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”).
Furthermore, Respondent registered the at-issue domain names with knowledge of Complainant’s rights in its relevant trademarks. Complainant’s XBOX and XBOX LIVE marks were, and are, famous and familiar to countless consumers. Respondent’s prior knowledge of Complainant’s rights in the XBOX and XBOX LIVE marks is further evidenced by Respondent’s use of phrases that identify Complainant’s services within Respondent’s at-issue domain names, as well as by the liberal display of Complainant’s images and logos on Respondent’s relevant websites. Respondent’s knowledge of Complainant's trademark rights prior to registering the at-issue domain names suggests that Respondent registered the domain names in bad faith 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").
Finally as discussed in greater detail above, Respondent has used the <xboxmusicpassfree.com> website to attempt to facilitate the download of malicious software to the computers of the website’s visitors. These circumstances additionally demonstrate Respondent’s bad faith registration and use of the <xboxmusicpassfree.com> domain name under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xboxmusicpassfree.com>, <xboxlive2days.info>, and <xboxliverewards.net> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 21, 2013
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