WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington
Case No. D2003-0501
1. The Parties
The Complainant is Microsoft Corporation, Redmond, Washington, of United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Party Night, Inc. d/b/a Peter Carrington, Amsterdam, Netherlands and Geneva, Switzerland.
2. The Domain Names and Registrars
The disputed domain names <xboxchaets.com> and <xboxcheets.com>, are registered with CSL Computer Service Langenbach GmbH dba Joker.com. The disputed domain names <xboxliv.com> and <xboxmagizine.com> are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 26, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com and Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name(s) at issue. On June 26, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent Party Night Inc. is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On July 4, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent Party Night Inc / Peter Carrington is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 30, 2003.
The Center appointed Anders Janson as the sole panelist in this matter on August 6, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:
Complainant is a very well-known worldwide provider of computer software and related products and services, including product and services designed for use through the Internet as well as inter alia computer operating systems, client/server applications, business and consumer productivity applications, software programming tools and interactive media programs. The Complainant has developed and has extensively marketed the Xbox video game console, Xbox gaming software, and Xbox compatible accessories. The products and services are marketed under the trade mark "XBOX".
Complainant is the owner of the following subsisting trade mark registrations with the United States Patent and Trademark Office.
- Registration No 2698179 of the mark XBOX, for inter alia entertainment services namely providing interactive multiplayer game services for games played over the Internet, providing information on the videogame and computer game industries visa the Internet, providing computer games and videogames downloadable over computer global communications network was registered March 18, 2003.
- Registration No 2663880 of the mark XBOX for inter alia interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers, and software for operating game controllers was registered December 17, 2002.
- Registration No 2646465 of the mark XBOX for video game player machines for use with televisions and computers, computer and videogame controllers, computer software for playing computer and videogames, operating system software programs and utility programs for use with the above referenced machines, user manuals therefore sold as unit therewith was registered November 5, 2002.
Furthermore, the Complainant has a number of registrations pending with United States Patent and Trademark Office, including "XBOX LIVE" for inter alia entertainment services, namely providing interactive multiplayer game services for games played over the Internet, downloadable computer programs and providing multiple-user access to the Internet via cable and telephone networks, voice chat and web messaging services and transmission of interactive audio and video services.
In addition to the United States trademark registrations, the Complainant has obtained trademark registrations or has registrations pending for the XBOX mark in more than 50 countries throughout the world, including registrations in the European Community.
The Complainant has established an Internet website located at the domain name comprised of the XBOX mark, "www.xbox.com", which among other things provides visitors with information on the Xbox console, games and accessories and offers support services and sells the Xbox-products. In addition, the Complainant licenses its XBOX mark for use with the "Official Xbox Magazine" which is a monthly publication distributed through newsstands globally. The magazine has established a webpage, "www.officialxboxmagazine.com", which offers among other things subscription services, chat forums and information on Xbox games.
The Complainant has registered the domain name <xboxlive.com> which resolves to the "www.xbox.com" website.
The Complainant has extensively marketed the Xbox-products and has advertised and promoted the Xbox on a global basis. The Complainant states, citing various news articles, that 3.9 million Xbox consoles and 20 million game packages has been sold within 9 months from the release date of the Xbox console, garnering 25% of the United States market share for videogames.
The Respondent Party Night Inc. d/b/a Peter Carrington has stated contact addresses in Amsterdam, the Netherlands and Geneva, Switzerland.
The disputed domain name <xboxmagizine.com> was registered by the Respondent on November 11, 2002, with Key-Systems GmbH d/b/a domaindiscount24.com. Party Night Inc. d/b/a Peter Carrington is the owner and administrative contact with a stated address in Amsterdam, the Netherlands.
The disputed domain name <xboxliv.com> was registered by the Respondent on August 14, 2002, with Key-Systems GmbH d/b/a domaindiscount24.com. Party Night Inc. d/b/a Peter Carrington is the registered owner and administrative contact with a stated address in Amsterdam, the Netherlands.
The disputed domain name <xboxcheets.com> was registered by the Respondent on January 13, 2002, and renewed on January 1, 2003, with CSL Computer Service Langenbach GmbH dba Joker.com. Party Nights Inc. is the registered owner with a stated registered, administrative, technical and billing contact address in Geneva, Switzerland.
The disputed domain name <xboxchaets.com> was registered by the Respondent on March 4, 2002, and renewed on February 27, 2003, with CSL Computer Service Langenbach GmbH dba Joker.com. Party Nights Inc. is the registered owner with a stated registered, administrative, technical and billing contact address in Geneva, Switzerland.
The disputed domain names directs the User to "www.amateurvideos.nl/hanky-panky-party.html" which is a website titled "Hanky Panky College". The website links to pornographic sites, such as for example "Spy Videos!!/Dirty Dirty Celebs", "MTV Hardcore Sluts" and "Young and Slutty". When the User exits the Hanky Panky college website, the User is forced to exit a number of successive websites which contains a large amount of links to several other sites including MP3 downloading software, online gambling sites etc, a process called "mousetrapping".
Complainant has asserted that the "Inc." suffix in the Respondents stated name "Party Night Inc." is not a recognized manner of denoting a company under Dutch law and the company is not registered with the Dutch Chamber of Commerce. "Peter Carrington" is not listed in the Amsterdam phone directory, and the address given in Amsterdam relates neither to Party Night Inc nor Peter Carrington. Further more, the Complainant has asserted that Party Night Inc and Peter Carrington are aliases for John Zuccarini, a conclusion based on the fact that <xboxcheats.com> and <xboxcheets.com> both resolve to the Internet Protocol (IP) address 18.104.22.168. Numerous domain names registered by Mr. Zuccarini, for example <www.xenicol.com> resolve to the same IP address. The Panel finds it established that "Party Night Inc." and "Peter Carrington" are identical to John Zuccarini. The Respondent has repeatedly been considered acting in bad faith in numerous proceedings brought pursuant to the Dispute Policy in which the owners of well-known trade marks obtained transfer or cancellations of domain names registered by the Respondent.
The Panel takes arbitral notice of the multiple successful proceedings initiated under he Policy against Respondent and his related companies in the past. See inter alia, Encyclopedia Britannica Inc. v. John Zuccarini, The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (June 7, 2000); Spiegel Catalog, Inc. v. Zuccarini, eResolution Case No. AF-0237 a-d (July 28, 2000); Diageo P.L.C. v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000); Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000); Electronics Boutique Holdings v. Zuccarini, 2000 WL 1622760 (E.D. Pa. October 30, 2000); Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1004 (November 1, 2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001), AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (August 28, 2002).
5. Partiesí Contentions
Complainant contends that:
- the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain name were registered and are being used in bad faith; and
- the domain names <xboxmagizine.com>, <xboxliv.com>, <xboxchaets.com> and <xboxcheets.com> should be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
The domain names at issue is <xboxmagizine.com>, <xboxliv.com>, <xboxchaets.com> and <xboxcheets.com>. Complainant is the holder of several registered trademarks of the word "XBOX". The Complainant has provided statements to support the supposition that the disputed domain name and the name and marks of the Complainant are confusingly similar, construed by the addition of the misspelled words "magizine", "liv", "cheets" and "chaets". The Respondent does not contest this supposition.
The Panel recognizes that in numerous proceedings, a distinctive mark in its entirety incorporated in a domain name has been found to render the domain name confusingly similar to the distinctive mark in question (inter alia, Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428, Sony Corporation v. Park Kwangsoo, WIPO Case No. D2001-0167). The Panel finds that the addition of the suffixes "magizine", "liv", "cheets" and "chaets" does not prevent the possibility of confusion. Moreover, the typosquatting of the words "magazine", "live" and "chat" is, in the Panels opinion increasing the risk of confusion considering the Complainantís trademark registration of the trade mark XBOX for numerous products and services, including services for chats, interactive multiplayer game services and information over the internet concerning the Xbox-products and services.
In Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,, WIPO Case No. D2000-1415, the Panel stated that "An independent basis for finding that a domain name is confusingly similar to a trademark is that, by virtue of the domain name itself, the domain name may confuse Internet users as to whether the site is associated or affiliated with, or sponsored by, the trademark holder." Given that the typosquatting of the words "live", "chats" and "magazine", which specific words are likely to be related to "XBOX" by the Internet-users, and more specifically due to the nature of the Complainants use of the trade mark "XBOX" and the products related thereto, and further more given that the Respondent has defaulted, the confusion is a reasonable hypothesis. Thus, the Panel concludes that <xboxmagizine.com>, <xboxliv.com>, <xboxchaets.com> and <xboxcheets.com> is "identical or confusingly similar to the Complainantís trade mark. The Panel therefore holds that the Complainant has established element (i) of the Policy's Paragraph 4(a).
B. Rights or Legitimate Interests
The Respondent has not filed a Response in accordance with the Rules, Paragraph 5. The websites to which the disputed domain names relates does not by its content give evidence to any obvious connection between to the domain names and the content. The Respondent has not used or shown any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. The Respondent has no connection or affiliation with the Complainant.
The Panel further finds that given the quantity of domain name disputes filed against Party Night Inc / Peter Carrington /John Zuccarini, and the arbitral and judicial findings against him, it is sufficient to say that the Respondent has establish a prima facie case that he does not have rights or legitimate interests in respect of <xboxmagizine.com>, <xboxliv.com>, <xboxchaets.com> and <xboxcheets.com>.
The Panel holds that the Respondent has no right or legitimate interest in using the disputed domain names. The Panel therefore holds that the Complainant has established element (ii) of the Policy's Paragraph 4(a).
C. Registered and Used in Bad Faith
The Respondents registration of the disputed domain names strongly suggests knowledge of, and intent to capitalize on, the Complainantís "XBOX"mark as well as the related services, such as Xbox Live, The Official Xbox Magazine and chats. The domain name <xboxlive.com> relates to the Complainants domain name <xbox.com>, which in turn contains links to chatrooms. The Official Xbox Magazine can be found on the Internet at "www.officialxboxmagazine.com". The misspelling of the suffixes in the disputed domain names is obvious and the disputed domain names has no apparent meaning standing by itself. It is not reasonable to expect the Respondent to register the disputed domain names if the Respondent had no knowledge of the Complainantís trade mark and services in connection thereto.
Further more, the Respondent has diverted Internet users with a likely legitimate interest in the Complainants products and services to "www.amateurvideos.nl/hanky-panky-party.html" containing a website titled "Hanky Panky College", the content of which is pornographic. When exiting, the user is forced to exit successive websites through a mousetrapping process. It is not unlikely that the Respondent have done so to profit from fees paid by advertisers. Further more, the use of the domain names seemingly for the sole purpose to divert users to the website "www.hanky-panky-college.com", with pornographic content, not only may prevent the Complainant from using its trademark in a corresponding domain name but may also tarnish the Complainants mark. Further more, the Complainants products relating to the XBOX-mark is primarily used by children and adolescents, and the Respondents use of the XBOX-mark therefore exposes minors to pornographic material.
In addition, the many arbitral and judicial decisions rendered against Party Night Inc. / Peter Carrington/John Zuccarini is evidence of a behavior which is the misuse of famous marks for illegitimate purposes. The Complainant has in its complaint described the Respondent as a "Serial Cybersquatter", which the Panel finds most adequate.
In conclusion, the Respondent has not presented any viable reasons or evidence or arguments of a legitimate interest in using the disputed Domain Name. It is not possible to conceive an obvious reason in which the Respondent could legitimately use the domain name.
The Panel therefore holds that the Complainant has proved that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <xboxmagizine.com>, <xboxliv.com>, <xboxchaets.com> and <xboxcheets.com> be transferred to the Complainant.
Dated: August 18, 2003