Microsoft Corporation v. Woo Seungchul
Claim Number: FA0511000601455
Complainant is Microsoft Corporation (“Complainant”), represented by Martin Schwimmer of Schwimmer Mitchell Law Firm, 40 Radio Circle, Suite 7, Mt. Kisco, NY, 10549. Respondent is Woo Seungchul (“Respondent”), 1024-1 Newgoln Apt. DA-512, Anyang-Dong, Anyang Si Manan-gu, 1024-1 Newgoln Apt. DA-512, Gyeonggi-Do 430010, Korea.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myxbox.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 25, 2005; the National Arbitration Forum received a hard copy of the Complaint November 28, 2005.
On December 12, 2005, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <myxbox.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@myxbox.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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. The domain name that Respondent registered, <myxbox.com>, is confusingly similar to Complainant’s XBOX mark.
2. Respondent has no rights to or legitimate interests in the <myxbox.com> domain name.
3. Respondent registered and used the <myxbox.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures and sells computer software and related products and services, including products and services designed for use on the Internet, under its XBOX mark. Complainant offers the following goods and services under its XBOX mark: video game player consoles; game software; online gaming services; communication services; and related goods including apparel and bags. Complainant holds many registrations for the XBOX mark, including Registration Numbers 2,698,197, 2,786,794, and 2,817,709 with the U.S. Patent and Trademark Office (“USPTO”), all filed on February 25, 2000, and registered on March 18, 2003, November 25, 2003, and February 24, 2004. Complainant also holds many registrations in countries other than the United States, including Registration Number 3,524, registered on August 9, 2001 with the Korean Intellectual Property Organization.
Respondent, Woo Seungchul, registered the <myxbox.com> domain name June 6, 2000. The <myxbox.com> domain name resolves to an English language search engine page providing search results related to XBOX brand products as well as links to competing products, such as “PS2.” The website also provides tabbed links to “creditcard,” “mortgage,” “sex,” and “loans.”
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."
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant provided extrinsic evidence in this proceeding
of its trademark registrations to demonstrate rights in the XBOX mark. A number of these registrations have filing
dates that pre-date the domain name registration date. Therefore, the Panel finds that Complainant
demonstrated rights in the XBOX mark pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The Panel finds that the domain name Respondent registered, <myxbox.com>,
is confusingly similar to Complainant’s XBOX mark because it merely adds the
word “my,” which does not significantly distinguish the domain name from the
mark. See NIIT Ltd. v. Parthasarathy
Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name
‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is
confusingly similar to the Complainant’s trade name and trademark NIIT”); ESPN,
Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000)
(finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is
confusingly similar to Complainant’s SportsCenter mark”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained within the disputed domain name. Respondent is
appropriating Complainant’s XBOX mark to refer Internet users to websites related
to video gaming, including Complainant’s competitor, as well as unrelated links
to categories such as “creditcard,” “mortgage,” “sex,” and “loans.” The Panel finds that appropriating another’s
mark to refer Internet traffic to competitors and unrelated third parties is
not a bona fide offering of a good or service pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
The Panel finds nothing in the record, including the WHOIS
registration information, which demonstrates that Respondent is commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged bad faith. Respondent is appropriating Complainant’s
mark to refer Internet users to a competitor.
The Panel finds that this is evidence of bad faith pursuant to Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Respondent is also referring Internet traffic to unrelated
links to categories such as “creditcard,” “mortgage,” “sex,” and “loans.” The Panel infers that Respondent is
receiving click-through fees for these referrals. The Panel finds that appropriating a mark to use in a domain name
that is confusingly similar to another’s mark for commercial gain is bad faith
pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Complainant satisfied 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 <myxbox.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2006
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