Microsoft Corporation v. ZENDER SLENDER
Claim Number: FA1608001691900
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ZENDER SLENDER (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox-gifts.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2016; the Forum received payment on August 31, 2016.
On September 2, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <xbox-gifts.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 September 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2016 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-gifts.com. Also on September 6, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 owns United States Patent & Trademark Office (“USPTO”) trademark registrations (for example Reg. No. 2,646,465 registered Nov. 5, 2002) for the XBOX mark. See Compl., at Attached Ex. D, pp. 36–39. The mark is used in conjunction with Complainant’s business of selling video game hardware and software. Respondent’s <xbox-gifts.com> domain name is confusingly similar to the mark as it takes the XBOX mark and adds a hyphen, the generic top-level domain (“gTLD”) “.com,” and the descriptive term “gifts.” The term “gifts” could be perceived to relate to something Complainant is giving to customers in connection with its XBOX product.
Respondent has no rights or legitimate interests in or to the disputed domain. 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 (previously privacy-shield-protected) as “Zender Slender” residing on “Hazy Route” in “Reefer City, Iowa.” See Compl., at Attached Ex. A. Furthermore, Respondent’s website appropriates much of Complainant’s official XBOX website, duplicating both color scheme and stylization—constituting a slavish imitation otherwise known as “passing off.” Compare Compl., at Attached Ex. B (Complainant’s official website offerings), with Compl., at Attached Ex. E (Respondent’s disputed domain’s resolving page). Therefore, no bona fide offering of goods or services or any legitimate noncommercial or fair use has been produced.
Respondent registered and used the disputed domain in bad faith. While Respondent has appropriated many elements of Complainant’s online offerings, it intends to drive Internet traffic to its confusingly similar domain for commercial benefit per Policy ¶ 4(b)(iv). Such use also imputes Respondent’s actual knowledge of the XBOX mark and Complainant’s rights in the mark when registering and subsequently using the disputed domain, which is bad faith under a nonexclusive interpretation of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <xbox-gifts.com>, was registered on August 24, 2016.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, XBOX, that the Respondent has not rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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(f), 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 (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 Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark in XBOX. Complainant has adequately pled its rights and interests in and to the trademark. Respondent arrives at the disputed domain name by merely taking the trademark in its entirety and appending a hyphen, the gTLD “.com,” and the descriptive term “gifts.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, XBOX.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name. Respondent is not associated with Respondent in any way and it has not rights or license to use the disputed domain name. The WHOIS information currently identifies the domain name’s registrant (previously privacy-shield-protected) as “Zender Slender” residing on “Hazy Route” in “Reefer City, Iowa.” As this is clearly a false address and there is no evidence in the record to contradict this finding, the Panel finds that the Respondent is not commonly known by the disputed domain name.
Respondent’s website appropriates much of Complainant’s official XBOX website, duplicating both color scheme and stylization—constituting a slavish imitation. This type of passing off constitutes a valid argument by Complainant to establish a prima facie case against Respondent. Complainant has provided evidence of its own website and of Respondent’s utilization of the resolving website of the disputed domain. Compare Compl., at Attached Ex. B (Complainant’s official website offerings), with Compl., at Attached Ex. E (Respondent’s disputed domain’s resolving page). The Panel finds that the arrangement of the elements of the resolving website of the disputed domain are substantially identical and clearly aimed at impersonating Complainant online.
Therefore, the Panel finds that there is no bona fide offering of goods or services or any legitimate noncommercial or fair use that has been produced. As such, the Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Specifically, Respondent’s website attempts to induce Internet users to “Share this unique link with your friends,” and by doing so users can “Earn points for each unique friend who clicked,” and thereby “Unlock one of the great games listed below.” Compl., at Attached Ex. E. All the while, Respondent incorporates the XBOX mark and displays Complainant’s products. The Panel finds that Respondent is passing itself off as Complainant for commercial gain. The Panel, therefore, concludes that bad faith use and registration under Policy ¶ 4(b)(iv) has been established.
The Panel, finally, finds that Respondent’s use of the disputed domain name establishes, under the totality of the circumstances, that Respondent had knowledge of the XBOX mark and Complainant’s rights in the mark when it registered and subsequently used the disputed domain. This amounts to bad faith use and registration under a nonexclusive interpretation of Policy ¶ 4(a)(iii). Panels have found that actual knowledge may be inferred from a respondent’s use of a domain in direct relation to a complainant. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (FORUM Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
As such, the Panel finds that the Respondent has engaged in bad faith use and registration of 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-gifts.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 3, 2016
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