WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Duin
Case No. DNL2013-0028
1. The Parties
Complainant is Microsoft Corporation of Redmond, Washington, United States of America, represented by Kennedy Van der Laan, the Netherlands.
Respondent is Duin of Hengelo, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <xboxone.nl> (the “Domain Name”) is registered with SIDN through Flexwebhosting BV.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 14, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 17, 2013, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 26, 2013. In accordance with the Regulations, article 7.1, the due date for Response was July 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2013.
On July 18, 2013, the Center received an email communication from Respondent in which he indicated that he would submit a late response. On the same date, the Center acknowledged receipt and informed Respondent that in the event a Response is submitted after the Response due date, the Panel will decide in its sole discretion whether to consider such submission in deciding the case. Respondent did not submit any late response or any other communication.
The Center appointed Gregor Vos as the panelist in this matter on August 1, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant is Microsoft Corporation, an American company active in the field of software development, IT-solutions and related services. In 2001, Complainant introduced the XBOX video game console. Its successor, the XBOX360, was introduced in 2005. Recently, Complainant announced its latest addition to its console line: XBOX ONE, which will be launched in November of 2013.
Complainant holds, inter alia, the following trademark registrations:
1. Community trademark XBOX, registered on August 6, 2001, no. 1611235, for goods in class 9;
2. Community trademark XBOX, registered on July 4, 2003, no. 2102804, for goods in classes 16, 18, 25 and 28;
3. Community trademark XBOX, registered on September 30, 2003, no. 2682417, for goods in classes 9 and 18;
hereinafter referred to as “the Trademarks”.
Complainant also indicated to hold various domain names containing the XBOX word mark, such as “www.xbox.com” and “www.xbox.nl”.
Respondent is an individual listed in the WhoIs details as Duin. Respondent registered the Domain Name on May 21, 2013. The Domain Name resolves to a website which informs Internet users that they will soon be able to pre-order the XBOX ONE console through the website. The website contains a picture of the XBOX ONE console, the name XBOX ONE, and the “X” logo of Complainant’s console.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to Complainant’s Trademarks.
Complainant argues that the Domain Name incorporates the Trademarks in their entirety, adding only the generic term ‘one’ and the generic top level domain ‘.nl’.
According to Complainant the top level domain ‘.nl’ should be disregarded in assessing the similarity between the relevant trademark on the one hand and the domain name on the other.
Complainant argues that ‘one’ is a mere reference to a number, and is therefore generic, implicating that the addition of ‘one’ is insufficient to avoid a finding of confusing similarity.
Respondent has no rights to or legitimate interests in the Domain Name
Complainant argues that there is no legitimate noncommercial or fair use of the Domain Name, nor is there any evidence that indicates that Respondent is commonly known by the name XBOX.
The Domain Name directs the visitor to a website which appears to indicate that Respondent will at some point in time start as a reseller of XBOX products.
Complainant proceeds with referring to the criteria for the use of domain names by resellers which incorporate trademarks. Under the criteria of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 – which decision is, according to Complainant, accepted by panels under the Regulations (Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050) – Complainant argues that Respondent should in any case have accurately and prominently disclosed his relation with Complainant, and is currently not offering any goods or services. Complainant argues that because Respondent failed to do so, Respondent thus has no rights or legitimate interests in the Domain Name.
Complainant further argues that even if the Panel would find that Respondent would meet the criteria as formulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Respondent still has no rights or legitimate interests in the Domain Name, because the date of registration of the Domain Name (May 21, 2013) coincided with the announcement of the XBOX ONE console. According to Complainant, it is therefore likely that Respondent aimed to draw traffic from Internet users to the website linked to the Domain Name, taking advantage of the confusion created by the use of the Trademarks.
Furthermore, Complainant argues in reference to UDRP-case law, that – due to the fact that the Domain Name is essentially identical to the Trademarks – it is strongly arguable that Respondent has no rights or legitimate interests in the Domain Name.
Respondent has registered or is using the Domain Name in bad faith
According to Complainant, it is inconceivable that Respondent was not aware of the XBOX trademarks at the time of registration of the Domain Name. Combined with the fact that the registration took place the same day as the official announcement of the XBOX ONE console by Complainant, Respondent registered the Domain Name in bad faith.
With reference to Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, Complainant argues that the Domain Name is also being used in bad faith: because the Domain Name incorporates the Trademarks without some distinguishing feature, it is strongly arguable that the Domain Name is being used in bad faith.
Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or fact.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The respondent has no rights to or legitimate interests in the domain name; and
c. The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
A. Identical or Confusingly Similar
There are two requirements that a complainant must established under the first criterion, being: i) that it has rights in a trademark or trade name, and ii) that the domain name is identical or confusingly similar to such trademark or trade name.
Complainant founded its Complaint on various Community Trademarks and has submitted copies of the trademark registrations from which it follows that Complainant is the holder of these Trademarks. The Trademarks invoked are protected under Dutch law.
It is established case law under the Regulations that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other (see, inter alia, Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017).
The Domain Name incorporates the trademark XBOX in its entirety. It is established case law that the addition of purely descriptive or generic elements – such as the element ‘one’ – to a trademark is insufficient to avoid a finding of confusing similarity, especially if the trademark in question is a well-known trademark.1
The Panel finds that the Domain Name is confusingly similar to the Trademarks.
B. Rights or Legitimate Interests
Pursuant to article 2.1(b) of the Regulations Complainant must demonstrate that Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or legitimate interests, and Respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
There is no evidence that Respondent has any relevant trademark or trade name rights regarding the term ‘xbox’. Respondent is not affiliated with Complainant nor has he received consent to use the Trademarks. Respondent is currently not offering any goods or services under the Domain Name, nor does the website which is linked to the Domain Name accurately disclose Respondent’s (lack of a) relationship with Complainant.2
Respondent did not dispute this. The Panel is therefore satisfied that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
Complainant’s Trademarks predate the date of the registration of the Domain Name. As noted in the Complaint, prior UDRP panels have held that the Trademarks are well known. In the light of these circumstances, combined with the fact that the Domain Name was registered the same day the XBOX ONE console was officially announced, the Panel holds that Respondent was, or at least must have been aware of Complainant and its Trademarks at the time of registration of the Domain Name.
Furthermore, the Domain Name is not being used for the bona fide offering of goods and/or services, which also indicates bad faith in the circumstances of this case.
The Panel therefore holds that the Domain Name has been registered or is being used in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <xboxone.nl> be transferred to Complainant.
Date: August 26, 2013
2 See in this regard Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which decision the panel formulated criteria for the bona fide offering of goods or services under a domain name by a reseller. The mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002.