Microsoft Corporation v. WG and Shahbaz Khan
Claim Number: FA0601000635281
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is WG and Shahbaz Khan (“Respondent”), 7211 Regency Square Blvd, Suite 120, Houston, TX 77036.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbox360wirelesscontroller.com>,
registered with Enom, Inc.
PANEL
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.
Patrick C .Guillot as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 24, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 26, 2006.
On January 24, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <xbox360wirelesscontroller.com>
domain name is registered with Enom, Inc. and that the 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-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On January 26, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 15, 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@xbox360wirelesscontroller.com
by e-mail.
A timely Response was received and determined to be complete on February
15, 2006.
On February 21, 2006, Complainant timely filed an additional
submission.
On February 23, 2006 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Patrick C. Guillot as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
a. The following domain
name is the subject of this Complaint: ICANN Rule 3(b)(vi).
Xbox360wirelesscontroller.com
b. Registrar Information:
ICANN Rule 3(b)(vii).
i. Registrar’s Name eNom, Inc.
ii. Registrar Address: 2002 156th Ave.,
NE, Suite 300
Bellevue,
WA 98807
iii. Telephone Number: 425-274-4500
iv. Facsimile Number: 425-974-4796
v. E-Mail Address: legal@enom.com
c. Trademark/Service Mark
Information: ICANN Rule 3(b)(viii).
Since 1975, Microsoft has manufactured, marketed and sold computer
software and related products and services.
Microsoft’s products and services include computer operating systems,
client/server applications, business and consumer productivity applications,
software programming tools, interactive media programs, Internet platform and
development tools, computer input devices, online information and entertainment
services, electronic commerce services, and video game systems and
accessories. Microsoft is the owner of
numerous proprietary marks for such computer software and related goods and
services. “XBOX” and “XBOX 360” are
the brand names for Microsoft’s video game entertainment systems. Microsoft has registered the XBOX trademark
with the United States Patent and Trademark Office and has applied for
registration of the XBOX 360 trademark.
i. XBOX trademark –
Microsoft is the owner of approximately 15 trademark registrations in the
United States on the Principal Register of the United States Patent and
Trademark Office for the trademark XBOX (collectively, the “XBOX Mark”). Notably, U.S. Registration No. 2,663,880 for
the mark XBOX covers interactive video game devices and accessories including
games, consoles and controllers.
The
mark XBOX was first used by Complainant in commerce at least as early as 1998
for TV and video converters and at least as early as 2001 for video game
systems, has been continuously used thereafter, and is still in use on or in
connection with Complainant’s goods, services, and advertising for its goods
and services throughout the world. In
fact, the XBOX Mark has been so widely used throughout the world that is has
become famous in connection with video games.
ii. XBOX 360 trademark
– Complainant has made use of the mark XBOX 360 in commerce throughout the
United States and internationally and has acquired significant common law
rights in the XBOX 360 Mark. Moreover,
Complainant has applied to the United States Patent and Trademark Office for
registration of the trademark XBOX 360, with nine applications for registration
currently pending (collectively, the “XBOX 360 Mark”). Most relevant to the current domain name
dispute, Complainant’s published application Serial No. 78/628,708 for the word
mark XBOX 360 covers interactive video games devices, including game consoles
and game controllers.
Furthermore, Complainant has registered and is using the domain names
<xbox.com> and <xbox360.com>. Representative use of the XBOX and XBOX 360
Marks may be found on Complainant’s www.xbox.com
web site, which offers video game users information about the XBOX and XBOX 360
video game platforms, games, accessories and support services.
In addition, XBOX products, including the XBOX 360 game console and
compatible accessories, are sold through the www.xbox.com web site. Most
notably, Complainant’s site offers an “XBOX 360 Wireless Controller” product
for sale.
Clearly, Microsoft has invested significant time, effort and money
advertising and promoting the XBOX and XBOX 360 Marks throughout the United
States and the world in connection with the XBOX and XBOX 360 video game
consoles, game software, compatible accessories, and related products and
services. As a result, Complainant’s
XBOX is among the world’s three most
popular video game platforms and the XBOX 360 game system has been headline
news since the announcement of its November 2005 launch.
B. Respondent:
Respondent has legitimate interest in the domain name
xbox360wirelesscontroller.com because it is engaged in a legitimate offering of
providing user friendly information, user comments, comparative shopping
information and sales information on xbox360 wireless controllers and Xbox 360
accessories. The Respondent has been
providing user friendly content related to Xbox since 2002 before Xbox became a
service mark at Microsoft.
C. Additional Submissions:
1. Identical or Confusingly Similar Domain Name
Complainant reiterates its allegations that Respondent’s use of XBOX
360 with the descriptive or generic wording “wireless controller” does nothing
to avoid consumers confusion regarding the source of the domain name. As Respondent asserts, “wireless controllers”
are controllers that work wirelessly with the XBOX 360 console. Thus, “controller” is the generic name of a
product with “wireless” acting as a descriptor.
As
stated in the Complaint, Complainant manufactures wireless controllers that are
branded as “XBOX 360 Wireless Controller.”
In addition, Complainant owns federal trademark registrations giving it
the exclusive right to use the name XBOX with controllers and owns a pending
application for trademark registration for the mark XBOX 360 in connection with
controllers. Respondent’s addition of
the product name “wireless controller” with Complainant’s famous XBOX 360
trademark does nothing to prevent consumer confusion and, in fact, invites
confusion since “XBOX 360 Wireless Controller” is a product manufactured and
sold by Complainant. See Caterpillar Inc. v. J. Shera, FA0104000097081
(Nat. Arb. Forum May 29, 2001) (“[T]he
addition of the descriptive suffix “engineparts” [in caterpillaregineparts.com]
reinforces the association between the domain name and the Caterpillar marks because
the phrase “engine parts” describes a category of Caterpillar’s products.”).
In
addition, Respondent’s point in Section
(a)(i) of the Response regarding third-party use of the XBOX 360 Wireless
Controller product name fails to address the confusing similarity of the domain
name to Complainant’s trademark. The
third-party sales of Complainant’s product on the internet support
Complainant’s allegation that Respondent is seeking to intercept internet users
who may be searching for Complainant’s XBOX 360 branded wireless controller
product for Respondent’s own commercial gain.
This supports Complainant’s allegation that the disputed domain name is
confusingly similar to its famous trademark.
2. Rights or Legitimate Interests in the Domain
Name:
Throughout its Response, Respondent refers to a hypothetical or future
use of the disputed domain name, which it claims demonstrates a legitimate
interest in using the XBOX 360 trademark.
Obviously, Respondent may claim that it had plans for a legitimate
offering of comparative shopping information about Complainant’s product, but
Complainant and the Panel can only analyze the merits of the use of the domain
name that Respondent has made to date to determine whether Respondent has any
rights or legitimate interests in the domain name. In its Response, Respondent calls the Panel’s attention to a link
shown on its home page featuring the wording “XBOX 360 Wireless Controller,”
claiming that this “advertisement” is making legitimate use of Complainant’s
trademark to identify Complainant’s product
However, if a consumer clicks on the link on Respondent’s home page, he
or she does not reach Complainant’s XBOX 360 branded product, but, rather, is
directed to a competing product.
Using
an unrelated party’s trademark to attract internet users to the point of sale
for competing products does not constitute a legitimate interest in using the
trademark. “Respondent’s use of a
domain name that is confusingly similar to Complainant’s XBOX mark to redirect
Internet users interested in Complainant’s goods and services to a website that offers similar goods and
services in competition with Complainant is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant the Policy ¶
4(c)(iii).” Microsoft Corp. v. Random Interactive Tech., Inc., FA 614528 (Nat.
Arb. Forum Feb. 13, 2006); see also Microsoft
Corp. v. Woo Seungchul, FA 601455 (Nat. Arb. Forum Jan. 20, 2006) (“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 . . . .”); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30,
2003).
Moreover,
unauthorized use of a mark in connection with the sale of multiple brands of
goods does not constitute bona fide use, even if the complainant’s goods can be
purchased too. Caterpillar Inc. v. J. Shera, FA 97081 (Nat. Arb. Forum May 29,
2001).
In
addition, Respondent claims that “respondent has been providing user friendly
content related to Xbox since 2002 before Xbox 360 became a service mark at
Microsoft.” The Response provides no
evidence to support this statement.
Respondent registered the domain name on May 14, 2005, within days of
Complainant’s public announcement of the release of its XBOXX 360 gaming
system. The timing of the registration
alone indicates that Respondent was seeking to benefit from the publicity surrounding
Microsoft’s announcement.
In
this case, Respondent’s use of the <xbox360wirelesscontroller.com>
domain name in connection with its own commercial activities offering
competitor’s gaming accessories does not qualify as evidence of a legitimate interest
in the domain name.
3. No Fair Use of the Domain Name
Clearly,
Respondent’s actual use of the domain name has not been a good faith,
legitimate use but, rather, a use of Complainant’s famous trademark designed to
attract internet users to Respondent’s own site for commercial gain. Although Respondent alleges that it has
plans for an informational, consumer-friendly site, its past use of the site
proves bad faith. In fact, through
legal counsel, Complainant alerted Respondent that it objects to Respondent’s
use of the domain name on January 6 and January 11, 2006, but Respondent did
not reply to Complainant with any of the fair use claims that it asserted in
its response. Rather, Complainant’s
cease and desist efforts went unanswered.
Furthermore,
Respondent’s comments in Section (c) of the Response regarding its use of the
trademark to inform consumers that Respondent is selling brand name products
and services do not support a claim of fair use of the domain name since
Respondent uses the XBOX 360 mark in its domain name and prominently on its
home page to direct internet users to its own sale of competing products. See
Microsoft Corp. v. Random Interactive
Tech. Inc., FA 614528 (Nat. Arb. Forum Feb. 13, 2006) (finding bad faith
where Respondent used the domain name xboxlivetournament.com to redirect
Internet users to Respondent’s commercial website featuring goods and services
competitive with Complainant’s goods and services). In fact, Respondent appears to be “baiting” consumers who are searching
the internet for the XBOX 360 branded wireless controller and “switching” them
to competing brands that are sold by Respondent. Such use of the XBOX 360 trademark by Respondent establishes bad
faith in this case. See Caterpillar Inc. v. J. Shera, FA 97081
(Nat. Arb. Forum May 29, 2001) (“The fact that Respondent is “baiting”
consumers to its website and likely “switching” them to other brands further
establishes Respondent’s bad faith.”)
Therefore, Respondent’s bad faith has been documented in this case.
Finally,
Complainant argues that Respondent’s comments regarding a proposed “fair use” of the site, such as to provide consumer
feedback and comparative pricing, are irrelevant to this proceeding. In fact, statements from the Response, such
as “xbox360wirelesscontroller.com is an informational site which contains
useful information for consumers along with comparative studies and prices on
Xbox 360 wireless controllers” are false as they relate to the current or past
use of the domain name. Moreover,
contrary to Respondent’s claims, the current site does not feature any “Terms
of Use” or other disclaimers to alert consumers that it is not sponsored by or
affiliated with Complainant. Therefore,
Respondent has presented no evidence that it is making anything other than a
bad-faith use of the domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 asserts that its registration of the XBOX mark with the United States Patent and Trademark Office (“USPTO”) is sufficient to establish rights in the 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 USPTO establishes Complainant’s rights in the mark.”); see also Men’s Warehouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
In addition, Complainant contends that it has developed common law rights in the XBOX 360 mark. Complainant states that it had expended significant time, effort and money to advertise and promote the mark throughout the United States and the world in connection with products related to its video game consoles. The Panel may find that Complainant has presented sufficient evidence of secondary meaning and that Complainant has acquired common law rights in the XBOX 360 mark pursuant to Policy ¶ 4(a)(i). See Tuxedos by Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A.Bendheim Co., Inc. v. Hollander Glass, FA142318 (Nat. Arb. Forum). The Panel finds that the domain name registered by Respondent is confusingly similar to the mark in which Complainant has rights.
The Panel is aware that while the initial burden lies with Complainant to show that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent once Complainant has made a prima facie case. Respondent must then provide evidence of its rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the <xbox360wirelesscontroller.com> domain name. Complainant contends that nothing in the record, including the WHOIS information, suggests that Respondent is commonly known by the domain name. Furthermore, Complainant asserts that it has not authorized Respondent to use its XBOX and XBOX 360 marks. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the domain name under 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); see also 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); see also Wells Fargo & Co. v. Onlyne Corp. Services 11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer the Respondent, Onlyne Corporate Services 11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Complainant
contends that Respondent is not using the <xbox360wirelesscontroller.com>
domain name in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain
name under Policy ¶ 4(c)(iii).
Complainant has presented evidence that the disputed domain name
resolves to a commercial website at the <wirelessgalaxy.com> domain name,
which offers a variety of electronics products, including video game system
accessories for Complainant’s XBOX system and competing game systems. The Panel may find that Respondent is using
Complainant’s marks to direct traffic to Respondent’s commercial website and
that this does not present evidence of rights or legitimate interests under
Policy ¶ 4(c)(i) or (iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan.
18, 2001) (stating that the respondent’s use of the complainant’s mark and the
goodwill surrounding that mark as a means of attracting Internet users to an
unrelated business was not a bona fide offering of goods or services); see
also Nike, Inc. v. Dias, FA
135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used
the complainant’s mark without authorization to attract Internet users to its website,
which offered both the complainant’s products and those of the complainant’s
competitors). The Panel finds that the
Respondent has no legitimate interest or rights with respect to the domain
name.
Complainant has provided evidence that Respondent is using the <xbox360wirelesscontroller.com> domain name to operate a commercial website that offers various electronic products, including some of Complainant’s products without authorization and the products of Complainant’s competitors. Complainant asserts that this shows that Respondent is attempting to attract Internet users who recognize the XBOX and XBOX 360 marks as being associated with Complainant’s video game system and related products and services. The Panel finds that Respondent is attempting to profit from the likelihood of confusion likely to result from Respondent’s use of the marks in the disputed domain name and that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstores, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain to attract Internet users to its commercial website); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy § 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fanuc Ltd. v. Mach. Control Servs., FA93667 (Nat. Arb. Forum March 13, 2000) (finding that the respondent violated Policy § 4(b)(iv) by creating a likelihood of confusion with the complainant’s mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant further argues that the timing of Respondent’s registration of the <xbox360wirelesscontroller.com> domain name is evidence of bad faith registration and use. Complainant contends that Respondent registered the domain name within days of Complainant’s public announcement of its XBOX 360 system on television. The Panel may find that these circumstances indicate opportunistic bad faith and that this is sufficient to show bad faith registration and use under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy gold tournament “strongly indicates an opportunistic registration”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’’’).
Even if the Panel does find that Respondent used some form of a disclaimer, the Panel still finds bad faith registration and use under Policy § 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website). The Panel finds that the registration and use was in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xbox360wirelesscontroller.com>
domain name be TRANSFERRED from Respondent to Complainant.
Patrick C. Guillot, Panelist
Dated: March 15, 2006
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