Microsoft Corporation v. Phayze Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Phayze Inc.

Case No. D2003-0750

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington 98052-6399, United States of America,

represented by Arnold & Porter, United States of America.

The Respondent is Phayze Inc, Paris, France.

2. The Domain Name and Registrar

The disputed domain name <hackingxbox.com> is registered with IDR Internet

Domain Registry Ltd.

3. Procedural History

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

on September 24, 2003. On September 25, 2003, the Center

transmitted by email to IDR Internet Domain Registry Ltd. a request for registrar

verification in connection with the domain name at issue. On September 29, 2003,

IDR Internet Domain Registry Ltd. 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 October 2, 2003.

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

was October 22, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on October 27, 2003.

The Center appointed Debrett G. Lyons as the Sole Panelist in this matter on

October 31, 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 has asserted the following facts, which the Panel finds established:

The Complainant is a very well known world wide provider of computer software

and related products and services, including products and services designed

for use through the Internet. Its products and services include computer operating

systems, client/server applications, business and consumer productivity applications,

software programming tools and interactive media programmes, Internet and platform

development tools, computer input devices, online information and entertainment

services, electronic commerce services and computer publications. The Complainant

has developed the Xbox video game console, Xbox gaming software, and Xbox compatible

accessories and offers these products and services to the public under the trademark

XBOX.

The Complainant holds the following United States trademark registrations:

- Registration No. 2,646,465 for XBOX in class 9 - 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

programmes and utility programmes for use with the above referenced machines;

user manuals therefor sold as a unit therewith.

This trademark was registered on November 5, 2002.

- Registration No. 2,663,880 for XBOX in class 9 - interactive video game devices

comprised of computer hardware and software and accessories, namely game consoles,

game controllers and software for operating game controllers.

This trademark was registered on December 17, 2002.

- Registration No. 2,698,179 for XBOX in class 41 - entertainment services,

namely providing interactive multiplayer game services for games played over

computer networks and global communications networks, providing information

on the video game and computer game industries via the Internet; and providing

information on computer games, video games, video game consoles and accessories

thereof via the Internet.

Class 9 – providing computer games and video games downloadable over computer

global communications networks.

Class 38 – providing on-line chat rooms for transmission of messages among

computer users concerning video and computer games; providing on-line electronic

bulletin boards for transmission of messages among computer users concerning

video and computer games.

This trademark was registered on March 18, 2003.

- Registration No. 2,730,847 XBOX in class 9 - Video game player machines for

use with televisions and computers, and operating system, software programs

and computer utility programs for use therewith; electronic devices, namely,

computer hardware for accessing global computer and communication networks;

and operating system software programs and computer and communication networks,

and operating system software programs and computer utility programmes for use

therewith; computer hardware and peripherals; computer game controllers; computer

game pads and controllers; computer software for playing video games and computer

games and for accessing and browsing global computer and communication networks;

computer software for compressing and decompressing data and video images, word

text editing; computer game programmes and computer video game programs downloadable

from global computer networks and global communications networks; and user manuals

for all the aforementioned software and devices sold as a unit therewith.

This trademark was registered on June 24, 2003.

- Registration No. 2,738,849 XBOX in class 35 - arranging and conducting trade

show exhibitions in the field of video and computer games for the video and

computer game industry; organizing and conducting exhibitions to advertise and

promote the sale of video and computer games of others; and providing trade

information about the computer game and video game industry.

This trademark was registered on July 15, 2003.

The Complainant also has a number of applications pending before the United

States Patent and Trademark Office (USPTO), including XBOX LIVE in classes 9,

38 and 41.

In addition, there are trademark registrations (and pending applications)

in the name of the Complainant for the XBOX mark in various countries throughout

the world, including the European Community.

The Complainant is the holder of the domain name <xbox.com> and has established

an Internet website at "www.xbox.com", which provides visitors with

information about the XBOX console, games and accessories and offers support

services, gaming tips and XBOX products for purchase.

The Complainant has marketed and promoted the XBOX product throughout the world.

The Complainant states that the advertising and promotion has resulted in sales

of more than 9 million XBOX gaming consoles between 2001 and September 1, 2003

(and has provided an article which supports this claim). It has also produced

an article which confirms that XBOX, as at July 28, 2003, had a 25%

share in most key markets.

The Respondent registered the disputed domain name <hackingxbox.com>

on May 13, 2003, with I.D.R. Internet Domain Registry Limited. According

to the WhoIs database maintained by I.D.R., the registrant is Phayze Inc. The

administrative contact is stated to be Phayze Inc. (PHAINC). The same address

is provided as for the registrant of the domain name.

When an Internet user enters the disputed domain name, he or she is immediately

re-directed to a website located at "http://amateurvideos.nl/hanky-panky-party.html".

The home page of this website is headed "Hanky Panky College". It

is stated on this page that the website contains "sexually-orientated adult

content which may include visual images and verbal descriptions of nude adults,

adults engaging in sexual acts and other audio and visual materials of a sexually-explicit

nature". When connecting to the "www.amateurvideos.nl/hanky-panky-party.html"

website, a pop up screen for "www.yes-yes-yes.com" appears. According

to the WhoIs database maintained by Joker.com, the registrant of this domain

name is John Zuccarini. When the user attempts to close the "www.yes-yes-yes.com"

website numerous pop-up boxes are generated, which prevent the user from departing

from the site without first having to select a series of adverts. These pop-up

boxes include advertisements for an MP3 messenger service and online games.

Upon entering the "www.hanky-panky-college.com" website, pop-up boxes

containing pornographic images appear. When attempts are made to close these

boxes, further pornographic sites appear on the screen.

The Complainant has asserted that the Respondent provided inaccurate contact

details in relation to the domain name in question, as the phone number provided

is inconsistent with a Paris address. In addition, the Complainant has submitted

that Phayze Inc is, an alias for John Zuccarini. It has based these assertions

on the following:

The Complainant makes reference to an article entitled "Large-Scale Registration

of Domains With Typographical Errors" which can be found in a report on

the website for Harvard University’s Berkman Centre for Internet and Society.

This report states that Phayze Inc is one of the pseudonyms, amongst others,

utilized by Mr. Zuccarini. The report lists a large number of domain names

registered by Mr. Zuccarini under the Phayze Inc pseudonym, including

<teenpeopel.com>, <thewheathernetwork.com>, <towerecord.com>

and <waachovia.com>. The addresses listed in Joker.com’s WhoIs database

for those domain names are the same as the address given in the <hackingxbox.com>

registration.

The Panel finds it established to its satisfaction that the contact details

given for the registration in question are not entirely correct and that Phayze Inc

is a pseudonym or alias for John Zuccarini.

The Panel notes that there have been a large number of successful complaints

initiated under the Policy against the Respondent, John Zuccarini and his

other alias companies. These include Microsoft Corporation v. Party Night,

Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501;

Microsoft Corporation v. Cupcake Patrol, WIPO

Case No. D2000-1344; Microsoft Corporation v. Cupcake City, WIPO

Case No. D2000-0818; Sierra Trading Post, Inc. v. John Zuccarini, WIPO

Case No. D2002-0263; NCRAS Management, LP v. Cupcake City and John Zuccarini,

WIPO Case No. D2000-1803; and Nicole

Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO

Case No. D2000-1415.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the domain name in issue is identical or confusingly similar to the trademark

in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain

name in question;

- the domain name was registered and is being used by the Respondent in bad

faith.

The Complainant seeks the transfer of the domain name from the Respondent to

the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has alleged that the domain name in question is confusingly

similar to its XBOX marks, as well as to its registered domain name and website

address which incorporate the XBOX mark. It argues that the addition of the

generic word "hacking" to the Complainant’s protected XBOX mark does

not avoid confusion with the mark. The Complainant also suggests that the domain

name is likely to cause confusion as to the source of the website and may lead

the public into believing that the Complainant supports or endorses the site

or is affiliated with it, thereby sullying its reputation.

Whilst the contested domain name is not identical to the trademarks held by

the Complainant, it does contain the mark in its entirety. In numerous proceedings,

this has been found to be sufficient to render a domain name confusingly similar

to the relevant mark. America Online Inc v. Andy Hind, WIPO

Case No. D2001-0642, concerned the complainant’s trademarks ICQ and MAPQUEST.

The complainant asserted that the addition of the generic word "hacks"

to the ICQ mark was insufficient to avoid confusion. The Panel found the disputed

domain names <icq-hacks.com> and <icq-hacks.net> to be virtually

identical and confusingly similar to the complainant’s trademark.

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". The Complainant’s XBOX mark is well renowned, as discussed

above. Only one non-distinctive word has been added to this mark to form the

domain name in question. Given the above and the fact that the Respondent has

not provided any arguments or evidence to refute the Complainant’s contentions,

the Panel finds that the supposition of confusion is reasonable and concludes

that paragraph 4(a)(i) is proved.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out an illustrative list of the ways

in which the Respondent can show rights or legitimate interest in a disputed

domain name.

The Complainant has alleged that the website to which the disputed domain name

relates does not provide evidence of any obvious connection between the domain

name and the content. The Complainant believes that the Respondent has never

been known by the name "xbox", "hackingxbox" or indeed any

other domain name incorporating either of the aforementioned. The Complainant

has confirmed that the Respondent had no connection or affiliation with it and

has not received any licence or consent, express or implied, from it to use

the XBOX mark in a domain name or in any other manner.

By failing to file a response, the Respondent has provided no evidence to counter

the allegations of the Complainant that it lacks any rights or legitimate interests

in the disputed domain name. The Panel concurs with the Complainant that there

is no obvious connection between the domain name and the content of the site

and accepts that the Respondent is not commonly known by the names "xbox",

"hackingxbox" or other similar names. In Eric Cummings v. Sepuelveda

Ventures, NAF Case No. FA0110000100362, it was held that the use

of a domain name identical to another’s mark to link to a pornographic website

does not constitute a bona fide offering of goods. In addition, use of

a domain name that may tarnish a trademark owner’s mark by diverting users to

an adult website that bears no logical relationship to the domain name has been

held not to form a legitimate interest or use (Mattel Inc v. Phayze Inc,

NAF Case No. FA0302000147303). Consequently, the Panel holds that paragraph 4(a)(ii)

of the Policy has been proved.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out an illustrative list of circumstances

that constitute evidence of registration and use in bad faith. The Complainant

has submitted several allegations in support of its contention that the domain

name was registered and is being used in bad faith. The Panel will deal with

each of these in turn:

(i) The Respondent has a well documented practice of registering domain names

comprising or including other companies’ well known trademarks.

As stated in the factual background above, it is accepted that Phayze Inc is

an alias for Mr. Zuccarini, who also uses a variety of other pseudonyms.

There have been a number of cases against those entities. In each of those cases,

the Administrative Panel has held that the domain name was registered in bad

faith and ordered that it be transferred to the Complainant in question. A pattern

of registering variations of other parties’ well known trademarks is "probative

in showing bad faith on the part of the Respondent" Doctor.Ing.h.c.F.Porche

AG v. Stonybrook Investments Limited, WIPO

Case No. D2001-1095.

(ii) The Respondent has registered the disputed domain name in bad faith by

doing so with knowledge of the Complainant’s rights in the XBOX mark.

A large number of the Complainant’s marks (and its domain name) were registered

prior to the Respondent’s domain name and the Respondent could have easily obtained

information about these by making appropriate searches. Failure to perform a

trademark search prior to registration of a domain name is evidence of bad faith

(Kate Spade, LLC v. Darmstadter Designs, WIPO

Case No.D2001-1384). Notwithstanding this, the XBOX mark is well known worldwide.

It is highly probable, therefore, that even without conducting searches, the

Respondent would have known of the Complainant’s rights in the mark.

(iii) The Respondent provided false information when registering the domain

name.

The factual information shows that the telephone number given is inconsistent

with the French address provided. Providing inaccurate information is evidence

of bad faith (Dell Computer Corporation v. Clinical Evaluations, WIPO

Case No.D2002-0423).

(iv) The Complainant asserts that the Respondent’s use of the domain name in

connection with a site that exhibits pornographic material is evidence of bad

faith use.

In Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington,

WIPO Case No. D2003-0501, bad faith use was found,

in part, because "the use of the domain name seemingly for the sole purpose

of diverting users to the website ‘www.hanky-panky-college.com’ with pornographic

content, not only may prevent the Complainant from using the trademark in a

corresponding domain name but may also tarnish the Complainant’s XBOX mark".

In addition, the case Mattel Inc v. Phayze Inc, NAF Case No. FA0302000147303,

states that "the Respondent used the disputed domain name in bad faith

when it chose to use the infringing domain name in connection with pornography".

(v) The Complainant contends that the Respondent has used the domain name to

divert users to its website. It states that this is evidence of bad faith use

of the domain name.

Given that it seems highly unlikely that the Respondent would not have been

aware of the Complainant’s marks prior to applying for registration of the disputed

domain name and the fact that the Respondent has a well-documented practice

of registering domain names comprised of other companies well known trademarks,

it appears highly probable that the Respondent intended to use the success of

the Complainant’s mark to attract Internet users to its site. Diversion of traffic

to infringing websites by using well known trademarks and domain names is bad

faith use (Big Dog Holding Inc v. Day, NAF Case No. FA0002000093554).

(vi) The Complainant submits that even if the domain name <hackingxbox.com>

was not used by the Respondent to divert Internet users to an active website,

its registration would still constitute bad faith, as the Respondent must have

expected use would cause harm to the Complainant and "inevitably lead to

confusion of some sort" amongst Internet users.

The Panel does not accept this ground in itself as establishing bad faith,

as it is vague and ephemeral and does not appear to add any new information

to the previous arguments put forward by the Complainant.

Notwithstanding the Panel’s comments in the previous paragraph, the cumulative

effect of so many elements of bad faith leads the Panel to conclude that bad

faith exists on the part of the Respondent. The Panel, therefore, finds that

paragraph 4(a)(iii) of the Policy has been proved.

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 <hackingxbox.com>

be transferred to the Complainant.

Debrett G. Lyons

Sole Panelist

Dated: November 13, 2003

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