WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Samyung Kim

Case No. DTV2010-0009

1. The Parties

The Complainant is Microsoft Corporation of Redmond, Washington, United States of America, represented by Covington & Burling LLP, United States of America.

The Respondent is Samyung Kim of Gwangmyeong, Gyeonggi-do, Republic of Korea (“Korea”), appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <xbox.tv> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 30, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 30, 2010, Tucows Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Response was filed with the Center on July 25, 2010.

On July 31, 2010, the Center received from the Complainant’s counsel a Reply to the Respondent’s Response. On August 2, 2010, the Center acknowledged receipt of the Reply, and also informed that while the Rules do not expressly provide for supplemental filings (beyond the complaint and response) by either party, except in response to a notification or request by the Center or panel, the Panel will be informed of the supplemental filings, and “[i]t will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision . . . .” The Respondent was copied on this correspondence. The Panel has been provided a copy of the Complainant’s Reply, and notes that the Respondent did not submit a supplemental filing in reply thereto.

The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on August 3, 2010. 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.

As discussed herein, English is the language of this proceeding.

4. Factual Background

The Complainant, a corporation organized under the laws of the State of Washington, manufactures and sells computer software and related products and services. The Complainant has received multiple registrations of the XBOX mark from the United States Patent and Trademark Office, including those on November 5, 2002 (for “video game player machines for use with televisions and computers; computer and video game controllers; computer software for playing computer and video games; operating system software programs and utility programs for use with the above referenced machines; user manuals therefore sold as a unit therewith”), and December 17, 2002 (for “interactive video game devices comprised of computer hardware and software and accessories, namely, game consoles, game controllers, and software for operating game controllers”). The Complainant filed its applications for these registrations on October 18, 1999, and February 25, 2000, respectively.

The Complainant has also registered various marks that contain “xbox” in numerous countries worldwide, including Korea. It filed an application for the XBOX mark with the Korean Intellectual Property Office on July 14, 2000, and received registration for it on August 9, 2001. The Complainant had previously registered the domain name <xbox.com> on December 18, 1996.

The Respondent registered the disputed domain name <xbox.tv> on April 10, 2003.

5. Parties’ Contentions

A. Complainant

The Complaint contends that: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Complaint also states that the Complainant “began using the XBOX mark in 1998 in connection with TV and video converters. In 2001, Microsoft launched video game entertainment systems, software and accessories under the XBOX brand. In 2002, Microsoft introduced the XBOX LIVE system and platform, which, among other benefits, allows consumers to play XBOX games against other online players.”

The Complaint notes that “[p]rior UDRP panelists have found XBOX to be a well-known mark. See, e.g., Microsoft Corp. v. Freak Films Oy, WIPO Case No. D2003-0109 (Mar. 31, 2003); see also Microsoft Corp v. Phayze, Inc., WIPO Case No. D2003-0750 (Nov. 13, 2003).”

The Complaint contends that when the disputed domain name was registered, the XBOX mark was well-known in Korea, and notes that the Complainant had launched its XBOX console in Korea in December 2002.

The Complaint states that counsel for the Complainant had previously contacted the Respondent, first by letter on May 12, 2010, and then by email on June 3, 2010, objecting to the Respondent’s registration and use of the disputed domain name and requesting a transfer of the domain name to the Complainant. The Complaint asserts that after this correspondence, the Respondent revised the content of the website associated with the disputed domain name to contain an explanation of how the disputed domain name was registered and was being used. The Complaint contends: “The explanation -- involving ‘boxes’ of information that is being ‘exchanged’ -- is far-fetched and nonsensical. It is clearly a post-hoc effort by Respondent to justify his registration and use of the disputed domain name.”

The Complaint explains that the Complainant first learned about the disputed domain name in late April 2010, and then took prompt action through its counsel.

B. Respondent

The Respondent states that after acquiring the disputed domain name in 2003, he has been using it as a “non-profitable development community site. Xbox.tv has been operating for sharing knowledge and technical tips, know-how for the software developers.” The Respondent also contends that he did not know of the Complainant’s XBOX product when he purchased the disputed domain name, and did not know about it until the Complainant “issued the dispute”. The Respondent explains how the disputed domain name was selected:

“ ‘[X]’ was taken from meaning ‘unknown variable’ from math science perspective and ‘cross’ or ‘exchange’ which means communicating and sharing knowledge. And this ‘x’ combined with the term ‘box’ which means something as container. I had been software engineer for over 10years. I wanted to create developer community through online. This is absolutely the personal taste how to name something when I created domain name. It was totally accidental that xbox was conflicted with the Complainant product name.”

The Respondent also contends that the XBOX product was not popular when he purchased the disputed domain name. The Respondent asks why the Complainant objects seven years after registration of the domain name.

Regarding the alleged registration and use of the disputed domain name in bad faith, the Respondent states:

“1. I’ve NEVER requested or asked anything to MS because I own xbox.tv since I started to own domain name.

2. I did NOT purchase domain name in order to take advantage of something by utilizing conflicted name. (I’ve never knew MS XBOX product until MS issued the dispute)

3. I’ve never taken advantage of something because xbox.tv is conflicted [Microsoft] XBOX product since I started to own domain name.

4. I’ve never sold anything through xbox.tv website since I started to own domain name.

5. xbox.tv is clearly non-profitable website.

6. xbox.tv does not contain anything related to any product of Microsoft or Microsoft XBOX product at all.

7. Complainant claimed that I could take advantage of Complainant brand name XBOX by making visitors confusing to log in xbox.tv. This is the main reason MS issued the dispute and try to take the ownership of xbox.tv. But what Complainant pointed out is fairly not true.”

“I’ve never tried to sell domain and asked money to Complainant. Then Complainant now issued dispute to WIPO claiming many issues and one of them is what I was suspected to have acquired the xbox.tv for the purpose of taking money from big conglomerate. I’m very insulted by Microsoft by this unkind and unethical action . . . .”

6. Discussion and Findings

Initially, the Panel will address two preliminary issues, relating to the language of the proceeding, and the timeliness of the Complainant’s cause.

Language of proceeding

Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement, unless otherwise agreed by the parties. The language of the registration agreement here is English. In response to the Center’s notification of the Complaint, the Respondent stated, “I wanna write in Korean about it. I can’t speak English well.”

Paragraph 11(a) also states that the determination of the language of the proceeding is “subject to the authority of the Panel . . ., having regard to the circumstances of the administrative proceeding”. In the present case, the Panel sees no reason to depart from the language of the registration agreement. The Complainant filed its Complaint in English; the Respondent’s Response is also in English. The Panel will take into consideration the content and arguments advanced by both parties.

Timeliness of proceeding

The Complainant acknowledges that it did not contact the Respondent to object to the disputed domain name until seven years after the registration of the disputed domain name. The Complainant explains that due to “the large number of domain names and the ease with which third parties can register and use infringing domain names, it is extraordinarily difficult to identify and investigate even a small percentage of potentially infringing domain names.” Although seven years is a lengthy period, the Panel sees no time bar to prevent the Complainant from commencing this proceeding under the Policy. In this regard, the Panel notes paragraph 197 of the Final Report of the WIPO Internet Domain Name Process (Apr. 30, 1999), which specifically states: “The WIPO Interim Report recommended that a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced.”

A. Identical or Confusingly Similar

The Complainant has rights in its XBOX mark. The disputed domain name <xbox.tv> incorporates the XBOX mark exactly, and differs from the mark only in that it adds the top level domain, “.tv”. The Panel determines that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.

The first element is demonstrated.

B. Rights or Legitimate Interests

The Complainant has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden then shifts to the Respondent to demonstrate any such right or legitimate interest. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that, if found by the panel, shall demonstrate the respondent’s rights or legitimate interests to the disputed domain name:

(i) before any notice to you [the 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 (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 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.

The Panel finds no evidence that the Respondent is commonly known by the disputed domain name, as provided in paragraph 4(c)(ii). The Response does not advance an argument that the Respondent was using, or was preparing to use, the disputed domain name for a “bona fide offering of goods or services”, under paragraph 4(c)(i). Instead, the Respondent appears to rely on paragraph 4(c)(iii), seeking to demonstrate a “legitimate noncommercial or fair use” of the disputed domain name. The Respondent specifically states that the disputed domain name “is clearly [a] non-profitable website”, and that he has been using the domain name for the purpose of creating a “developer community”.

The Panel is not convinced. A legitimate noncommercial or fair use under paragraph 4(c)(iii) requires that such use be “without intent for commercial gain to misleadingly divert consumers”. In the Panel’s view, and as further discussed below, there is question as to the Respondent’s intent in the use of the disputed domain name.

In sum, the Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name as illustrated in paragraph 4(c), or otherwise.

The second element is established.

C. Registered and Used in Bad Faith

There are several UDRP decisions in which the respondent alleges that it did not know of the complainant’s mark when registering the disputed domain name, or that it registered the domain name (identical or confusingly similar to the complainant’s mark) by chance. It is not an uncommon observation by panels in some of these decisions that such an assertion strains credulity. E.g., Hisamitsu Pharmaceutical Co., Inc. v. Chang Il Min, WIPO Case No. D2008-1390.

Here, the Respondent explains how it selected the <xbox.tv> domain name: “‘x’ . . . meaning ‘unknown variable’ . . . combined with the term ‘box’ which means something as container.” The Respondent also states unambiguously, “I swear that I never knew XBOX product by the Complainant when I purchased xbox.tv in 2003.”

The Panel is unable to determine that the Respondent had actual knowledge of the Complainant’s XBOX mark when he registered the domain name. Actual knowledge is not necessary, however. As previous panels have determined, bad faith can be found when the respondent knew, or should have known, of the complainant’s mark and rights thereto. E.g., Microsoft Corporation v. Edward Tapia, WIPO Case No. DTV2005-0002; The Condé Nast Bridal Group, Inc. v. Trademark, WIPO Case No. D2006-0452 (citing Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775).

Ultimately, the Panel concludes that by using the disputed domain name, the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy.

The third element is also demonstrated.

7. Decision

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 <xbox.tv> be transferred to the Complainant.

Ilhyung Lee
Sole Panelist
Dated: August 17, 2010