WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. domain for sale email@example.com 111.221.444
Case No. D2003-0938
1. The Parties
The Complainant is Microsoft Corporation of Redmond, Washington, United States of America represented by Arnold & Porter of Washington DC, United States of America.
The Respondent is domain for sale firstname.lastname@example.org 111.221.444 of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <xboxtrucchi.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2003. On November 27, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 28, 2003, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 5, 2003. 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 December 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 9, 2004.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on February 18, 2004. 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.
The Complainant submitted supplemental filing on December 23, 2003, in which the Complainant sought to introduce additional evidence concerning an offer to sell the domain name that arose after the initial filing of the Complaint, and requested to amend the Complaint accordingly.
4. Factual Background
The Complainant is Microsoft Corporation from Redmond, Washington, United States of America. Microsoft is a well-known manufacturer and distributor of computer software and related products and services, in business since 1975. The Complainant developed and has been marketing, worldwide, the "XBOX" video game console, XBOX gaming software and XBOX accessories. The Complainant registered "XBOX" as a trademark in the United States and Europe. The Complainant captured approximately 25% of the gaming console market worldwide with its XBOX gaming console and related products.
The Complainant also maintains an active presence on the Internet at the web site "www.xbox.com". The web site features product information as well as a forum for discussion for Xbox enthusiasts.
The Respondent registered the disputed domain name <xboxtrucchi.com> on February 27, 2003, and is using the domain name to provide ring tones for cellular telephones, and pornographic text messages for cellular telephones, as well as links to explicit pornographic web sites.
The Complainant became aware of the registration of the disputed domain name in August 2003. The Complainant sent a letter to the Respondent on October 3, 2003, requesting that the Respondent cease using the dispute domain name <xboxtrucchi.com> and either delete the domain name or transfer it to the Complainant. The Complainant has not received any response to this communication.
In an additional filing, the Complainant introduced evidence that on December 4, 2003, the Respondent contacted the Complainant by email offering to sell the disputed domain name to it.
5. Partiesí Contentions
The Respondent registered and is using a domain name that is identical and confusingly similar to Complainant's mark. The Respondent is using the disputed domain name to provide ring tones for cellular telephones and pornographic text messages for cellular telephones, as well as links to explicit pornographic web sites.
The Complainantís mark is well-known and has been widely used by the Complainant in connection its products and services. The Respondent could not have been unaware of the Complainantís rights in the mark. The disputed domain name is identical and confusingly similar to the Complainantís mark and was registered and used by the Respondent in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Procedural Issue Ė Supplemental Evidence and Subsequent Amendment to the Complaint
The Panel must discuss first the procedural issue of supplemental evidence submitted by the Complainant and the Amendment to the Complaint based on such evidence.
The Complainant submitted a supplemental filing on December 23, 2003, in which the Complainant sought to introduce additional evidence that arose after the initial filing of the Complaint, and amend the Complaint accordingly. In its submission, the Complainant asserted that "parties may file supplemental submissions to introduce Ďnew, pertinent facts that did not arise until after the submission of the Complaint.í" The Complainant relied on an interpretation of the Policy in The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453.
There are two issues with respect to this supplemental filing. First, whether and under what circumstances the Rules permit such a filing and, second, if the Rules do allow the filing, whether the applicable conditions, if any, are met in this case.
With respect to the first issue, the Rules for Uniform Domain Name Dispute Resolution Policy provide for the submission of a Complaint by the Complainant (Paragraph 3 of the Rules) and a Response by the Respondent (Paragraph 5 of the Rules). Paragraph 12 of the Rules provides that "[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." The Rules for Uniform Domain Name Dispute Resolution Policy are, therefore, silent with respect to unsolicited supplemental and additional filing and evidence.
As the panel in Ravissant Limited. v. Vama Inc., Mehul Kotecha, WIPO Case No. D2003-0747 noted: "no party has the right to insist upon the admissibility of additional evidence." Based on the lack of explicit reference to additional unsolicited filings in the Rules, numerous Panels in the past refused to consider supplemental filings, additional evidence and amendments to the Complaint. See, inter alia, Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; PepsiCo, Inc. v. "The Holy See," WIPO Case No. D2003-0229; Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones, WIPO Case No. D2002-1164; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case No. D2002-0624; VISIVA S.r.l. v. VISIVA di Rocca Sergio, WIPO Case No. D2001-1130; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398; Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; Goldline International, Inc. v. Gold Line, WIPO Case D2000-1151; Parfums Christian Dior S.A. v. Jadore, WIPO Case D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case D2000-0905; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case D2000-0662; AT&T Corp. v. WorldclassMedia.com, WIPO case Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO case D2000-0416; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case D2000-0270; Easyjet Airline Company Ltd v. Andrew Steggles, WIPO Case No. D2000-0024.)
Several Panels in the past accepted supplemental filings, but only as an exception based on the particular circumstances of the case, as well as the quality and importance of the supplemental filings and evidence. (See e.g., Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754.)
In this Panelís view, the circumstances of the current case do not reach the required level and therefore do not call for an exception to permit supplemental filings. The Panel is of the view that the Complainantís due process (as per paragraph 10 (b)) of the Rules: "In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case) is not prejudiced by declining the Complainantís request for supplemental evidence. Furthermore, the Panel adopts the view expressed in AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 that "the points raised in the supplemental memorandum are sufficiently articulated in the Complaint," and therefore rejects supplemental evidence and amendment to the Complaint filed by the Complainant. As a matter of policy, and with a view to ensuring that procedures under the Policy proceed diligently, it seems preferable, absent exceptional circumstances, to consider that the record is complete once the Complaint (and, if applicable, a response) has been filed, unless the Center or panel requests additional filings. The Panel will render its decision based solely on the evidence and arguments submitted in the Complaint.
B. Substance of the Complaint
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.B.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
1. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the wording of paragraph 4(a)(i) in regard to trademark or service mark has been interpreted by numerous Panels in the past to include both registered marks and common law marks. The record confirms that the Complainantís mark XBOX is registered in the United States and the European Union. Therefore, the Panel finds that the Complainant has rights in the mark XBOX.
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainantís mark. The disputed domain name <xboxtrucchi.com> incorporates the Complainantís mark XBOX with a generic word Ďtrucchií (which in Italian means Ďtricksí) and the generic top-level domain reference Ď.comí. As a rule, when a domain name wholly incorporates a complainantís mark and adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
2. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the XBOX mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainantís mark. Users who visit the disputed domain name are offered links to explicit pornographic web sites. It has been established by numerous Panels in the past that providing links to pornographic web sites, at least without any additional fact to support a finding of legitimate interest, does not constitute a bona fide offering of goods or services. See Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750; Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501; Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Goodrich Corporation v. bfg-fus.com, WIPO Case No. D2003-0477; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product.
There is evidence of the situation described in paragraphs 4(b)(i) and 4(b)(iv). The relevant facts are mentioned below.
The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is identical and confusingly similar to the Complainantís mark XBOX. It is reasonable to conclude that only someone who was familiar with the Complainantís mark would have registered the identical domain name. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. It is difficult to conceive that Respondent chose to register the domain name <xboxtrucchi.com> by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainantís marks.
Several panels in the past accepted evidence that an offer to sell the domain name may be established through the Whois database. See AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; CLT-UFA societe anonyme v. This Domain is for Sale / Sean Gajadhar, WIPO Case No. D2000-0801; Systima Limited v. Willie Byrne, WIPO Case No. D2001-0300; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205. In the present case, the Respondentís contact information in the Whois database (domain for sale email@example.com 111.221.444, domain locations, p.o.box, Nassau Ns 110100, Bahamas, of Bahamas) is an indication of the Respondentís intent to sell the domain name. Furthermore, false contact information in the Whois database has also been interpreted as a sign of a bad faith. See the decision (with a similar factual pattern) in Dell Computer Corporation v. Clinical Evaluations, WIPO Case No D2002-0423. In addition, the Respondent is using the disputed domain name for commercial purposes creating a likelihood of confusion with the Complainantís marks.
The Panel finds for the Complainant on this third element of the test.
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 name,<xboxtrucchi.com> be transferred to the Complainant
Daniel J. Gervais
Dated: March 1, 2004