Microsoft Corporation v. Freak Films Oy

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Freak Films Oy

Case No. D2003-0109

1. The Parties

The Complainant is Microsoft Corporation of Redmond, Washington, United States States of of America, represented by Hannes Snellman Attorneys at Law Ltd. of Finland.

The Respondent is Freak Films Oy of Helsinki, Finland; Saksanen, Kimmo (Kim Finn) of Helsinki, Finland.

2. The Domain Name and Registrar

The disputed domain name <xxx-box.net> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

the "Center") on February 13, 2003. On February 14, 2003,

the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide

a request for registrar verification in connection with the domain name at issue.

On February 16, 2003, Melbourne IT trading as Internet Name Worldwide 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

and technical contact. The Center verified that 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 February

20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was March 12, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on March 13, 2003.

The Center appointed Andrew Brown QC as the sole panelist in this matter on

March 19, 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 is a well-known world-wide provider of computer software and related products and services. It is also a major provider of video game systems for use with televisions and computers. One such video game system is the Complainant’s XBOX game system.

The Complainant claims that it has spent substantial time, effort and money advertising and promoting the XBOX trademark worldwide and that as a result, the XBOX trademark has become distinctive and well-known and the Complainant has developed significant goodwill in the trademark.

The Complainant states that is the registered proprietor of the trademark XBOX

in several countries. It provided evidence of its trademark registrations for

XBOX as both a word and a logo mark in the European Community, where the Respondent

is located. The application for the word mark was filed on April 14, 2000, and

the logo mark on February 28, 2001.

The Respondent registered the domain name at issue on March 16, 2002. The website

apparently offers mobile telephone ring tones, logos and banner space. The Panel

has not been able to verify the exact nature of the services offered as the

website is not in English. However, the site also features offensive and pornographic

material.

On December 30, 2002, the Finnish Consumer Agency contacted the Complainant’s Finnish subsidiary company regarding consumer complaints about the website.

On January 17, 2003, the Complainant wrote to the Respondent requesting a voluntary transfer of the domain name at issue. This was followed up by telephone calls with the Respondent. Following this contact, the Respondent posted a disclaimer on the site stating that it "has nothing to do with Microsoft Corporation or its crappy consoles".

The domain name at issue is apparently offered for sale on the website for the sum of €1 million. Again the Panel cannot verify this as the website is in Finnish and no translation has been provided.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Respondent registered the disputed domain name with the intent to exploit the Complainant’s goodwill in the XBOX trademark. The Complainant states that the Respondent has no legitimate interest in the infringing domain name. It has no connection or affiliation with Microsoft and has no licence or consent to use any of the Microsoft trademarks or product names.

Previously, the Respondent’s website displayed a logo which was almost identical to the Complainant’s XBOX logo mark but this logo mark has since been removed from the website. The Complainant annexed printouts from the site showing the logo XXX-BOX in a form and script which is the same as the Complainant’s XBOX logo mark.

The Complainant also alleges that the Respondent’s use of the domain name constitutes bad faith in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between the websites and the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

Finally, the Complainant claims that the Respondent’s offer on its website to sell the domain name for €1 million constitutes evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- 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

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in the European Community for the trademark XBOX.

There are obviously differences between the Complainant’s trademark XBOX and the disputed domain name. The single "x" at the beginning of the trademark has been replaced with "xxx". Also, there is a hyphen between "xxx" and the word "box".

Despite these differences, the Panel takes the view that the domain name <xxx-box.net>

is confusingly similar to the trademark XBOX in which the Complainant has rights.

This conclusion is bolstered by the fact that consumer complaints regarding

the site were forwarded to the Complainant, providing some evidence of actual

confusion.

B. Rights or Legitimate Interests

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel

to be proved, shall demonstrate the Respondent’s rights or legitimate interests

in the domain name. These circumstances are:

"(i) before any notice to the Respondent of the dispute, the Respondent’s

use of, or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with the bona fide offering of goods or services;

or

(ii) the Respondent (as an individual, business or other organisation) has

been commonly known by the domain name, even if the Respondent has acquired

no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 that none of the conditions outlined in (i) to (iii) have been

made out. There is no evidence whatsoever to show that conditions (ii) or (iii)

have been met. In relation to (i), it is plain that the Respondent was using

the website before any notice of the dispute, but the Panel cannot accept that

this use was bona fide. In circumstances where the Respondent not only registered

and used a domain name which bears a strong resemblance to the Complainant’s

well-known trademark XBOX, but also replicated the Complainant’s XBOX logo mark

on the website (altered to read "XXX--BOX") it seems plain that the

Respondent intended to trade off the Complainant’s reputation and goodwill in

its XBOX trademark.

Further, the Respondent has not provided any formal Response and the Panel

finds it appropriate to draw an adverse inference from the Respondent’s failure

to respond to the Complaint (SSL International plc v. Mark Freeman, WIPO

Case No. D2000-1080 (March 9, 2000) and Alta Vista Company v.

Grandtotal Finances Limited et al., WIPO

Case No. D2000-0848 (October 17, 2000)).

Overall the Panel can find no evidence to demonstrate that the Respondent has

rights or legitimate interests in the disputed domain name. The Panel therefore

finds that the Complainant has met the requirement in paragraph 4(a)(ii) of

the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your website 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 your website or location

or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the

above.

The Panel considers that the Respondent’s conduct in respect of the domain

name <xxx-box.net> is in breach of paragraph 4(b)(iv) above. By using

the domain name to sell services such as mobile phone ring tones and banner

advertising, the Respondent was intentionally attempting to attract, for commercial

gain, Internet users to the website by creating a likelihood of confusion with

the Complainant’s mark as to the source, sponsorship, affiliation or endorsement

of the website. While the Panel has been unable to verify the exact details

of all the commercial activities alleged (as the website is in Finnish and no

translation has been provided), the Panel is satisfied from material provided

by the Complainant and its own viewing of the website, that some commercial

activities are being offered on the website, such as links to pay-per-view pornographic

websites.

The Complainant has also alleged that the Respondent registered the disputed

domain name primarily for the purpose of selling it for valuable consideration

in excess of its documented out-of-pocket costs in breach of paragraph 4(b)(i).

The Complainant states that the domain name is offered for sale on the Respondent’s

website for €1 million. There is a reference on the site to €1 million but it

is in Finnish and the Panel has not been able to verify this assertion in the

absence of a translation of the material on the website.

Nonetheless, the Panel’s findings in relation to paragraph 4(b)(iv) are sufficient

basis for the Panel to conclude that the disputed domain name was registered

and is being used in bad faith.

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 <xxx-box.net>

be transferred to the Complainant.

Andrew Brown QC

Sole Panelist

Dated: March 31, 2003

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