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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. X-Obx Designs
Case No. D2003-0093
1. The Parties
1.1 The Complainant is Microsoft Corporation, a corporation organized and existing under the laws of the State of Washington, United States of America, having its principal place of Washington, United States of America.
1.2 The Respondent is X-Obx Designs, an entity of San Jose, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <xobx.com> which domain name is registered with Tucows, Inc., based in Toronto, Ontario, Canada.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 8, 2003, and the signed original together with four copies forwarded by express courier was received on February 10, 2003. An Acknowledgment of Receipt of Complaint was sent by the Center to the Complainant, dated February 13, 2003.
3.2 On February 14, 2003, a Request for Registrar Verification was transmitted to the registrar, Tucows, Inc. ("Tucows") requesting it to: (1) confirm that the domain name at issue is registered with Tucows; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; and (5) indicate the current status of the domain name.
3.3 On February 14, 2003, Tucows confirmed by reply e-mail that the domain name at issue is registered with Tucows, is currently in locked status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on February 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Tucows, and ICANN), setting a deadline of March 9, 2003, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 On February 18, 2003, Respondent sent an e-mail to the Center, objecting to the fact that the complaint had been transmitted in Microsoft Word format, a proprietary format of the Complainant, and requested that the document be forwarded in a vendor-neutral form.
3.7 On February 21, 2003, the Center transmitted the Notification of Complaint and Complaint to Respondent as .pdf files.
3.8 On February 22, 2003, Respondent requested additional time in which to respond to the Complaint. On February 28, 2003, Respondent was given to and including March 14, 2003, in which to respond to the Complaint.
3.9 On March 12, 2003, Respondent objected to the fact that the Model Response was available only as a Microsoft Word Document and requested additional time in which to respond. The Center gave Respondent to and including March 19, 2003, in which to file its response.
3.10 A Response was received by e-mail only on March 19, 2003. An Acknowledgment of Receipt (Response) was sent by the Center on March 26, 2003.
3.11 On March 27, 2003, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was April 10, 2003. This was subsequently extended to April 11, 2003. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the trademark XBOX in connection with video game player machines for use with television and computers with the United States Patent Office on November 5, 2002, showing a first use in commerce of November 21, 2001. Complainant also registered the trademark XBOX in connection with interactive video game devices comprised of computer hardware and software and accessories with the United States Patent Office ("USPTO") on December 17, 2002, showing a first use in commerce on November 21, 2001. Complainant also has several other applications pending with the USPTO in connection with luggage, clothing, sporting goods, and game accessories. All of the pending applications are Intent to Use applications. Complaint, Annex 4.
4.2 Complainant is a well-known provider of computer operating systems, computer software, and related products and services. Complainant has expended substantial time and money promoting the XBOX mark. The initial 1.5 million unit production of Xbox consoles sold out within three weeks. Complaint, Annex 5, Attachment A. Within nine months of its introduction, XBOX consoles had 25% of the market in the United States for video game consoles. Complaint, Annex 5, Attachment B.
4.3 Complainant has established an Internet web site at "www.xbox.com". The web site provides uses with information about the Xbox console, games and accessories and offers these items for sale. Complaint, Annex 6. Apparently in anticipation of the introduction of the XBOX product line, Complainant had registered the domain name <xbox.com> on February 23, 2000, twenty-two months before the XBOX mark was first used in commerce.
4.4 On November 20, 2001, the day before Complainant first used the XBOX mark in commerce, Respondent registered the domain name at issue.
4.5 Respondent uses the domain name at issue to resolve to a web site that states: "This page is not here yet. Perhaps this site is more helpful." The text is accompanied by a picture of Nintendo's Game Boy Advance console, a product directly competitive with that of Complainant. The site has two hyperlinks that linked to a site located at "www.liksang.com". The web site offered for sale Complainant's console as well as those of Complainant's competitors. Complaint, Annex 7. The site now contains the statement, "If you're looking for a particular video game console, games, accessories or luggage and are having spelling difficulties, try here." There is a hyperlink to Complainant's web site via the last word in the sentence.
4.6 Following the discovery of Respondent's web site and links, on November 22, 2002, Complainant's counsel sent a cease and desist letter to Respondent electronically and by courier. Complaint, Annex 9. Complainant received no response to this letter.
4.7 Respondent contends that "xbox" is a "generic term used by engineers to describe a yet unnamed piece of hardware."
4.8 Respondent attaches a copy of an article in EuroGamer in which a Florida company called Xbox Technologies alleged to have trademarked the word "Xbox" in March 1999. However, the article indicates that Xbox Technologies had yet to use the name. The article discusses the possibility of a lawsuit between Xbox Technologies and Complainant. Response, Annex B.6a. A later attachment of a print out of the BBC News web site indicates that the dispute had been settled, and that as a result of the settlement Complainant was free to use the XBOX mark and name. Response, Annex B.6b.
4.9 Respondent also offers various examples of generic uses of the term "xbox" to mean "the x position of a graphical box, a shortcut for checkbox, or as a function or structure representing a box." Respondent offers numerous other uses of the term "xbox." Response, B.1 and B.2.
4.10 Respondent argues that Complainant tacitly acknowledges that "xbox" is a generic term by using it on its web site and publications as a noun, rather than as an adjective.
4.11 Respondent contends that "xobx" is not a reasonably common misspelling of "xbox." As evidence of this, Respondent introduced Google search results that found 6,230,000 matches for "xbox", while Google search results found only 674 matches for "xobx." Response, Annexes C.1 and C.2. Respondent acknowledged that the vast majority of the 674 matches "appear to be from web site promoters that that [sic] generate pates full of randomly generated anagrams and misspellings of thousands of keywords, hoping to gather some search engine traffic. Response, Annex C.9.
4.12 Respondent produces evidence that some consumers have confused Complainant's logo for "xobx" because of its poor placement on some products. Response, Annex C.5.
4.13 Respondent alleges that after he moved to San Jose, California, he decided to register the shortest possible name in order to save keystrokes. Respondent alleges that he had read that every three-letter SLD in the .com gTLD had been taken, and so searched for an available four-letter SLD. Respondent selected <xobx.com>, because "[t]he letter 'X' is commonly associated with my operating system of choice Linux . . . and has a 'cool factor' associated with it. As a programmer, 'obx' makes me think of the term 'objects' a feature [sic] of many modern programming languages." "This may seem to be stretching it, but given the constraint of choosing from the list of unregistered four-letter domains, one has to use a bit of imagination to find an interesting and meaningful one." Response, page 9 of 19.
4.14 Respondent notes that it registered the domain name at issue the day before the mark XBOX was first used in commerce, and therefore "the Complainant could not have begun accruing good faith in this usage of 'XBOX'." Id.
4.15 Respondent "became aware of possible misuse of the 'xobx' mark from the web logs for the xobx.com web server. [Respondent's agent] found that a user of an online forum provided a link to xobx.com with the text 'XOBX is XBOX'.[sic]
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that the domain name at issue is not confusingly similar to Complainant's mark, that the mark is invalid as the use of a generic term, that Respondent has rights and legitimate interests in respect of the domain name at issue, and that the domain name is being used in good faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 Respondent concedes that Complainant holds a mark registered with the United States Patent and Trademark Office. However, Respondent contends that the mark is a generic term and should not be recognized. The Panel's authority to override a determination of national trademark authority is extremely limited. "The majority of Panels [facing the question of whether a mark is or has become generic] have elected to answer it." "Prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption." 401 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D1000-1223 (citation omitted).
6.5 Respondent has failed to meet its burden of proof. Rather than show that the term "xbox" has one ascertainable meaning, Respondent shows that the term has been used to mean many different things. Respondent also demonstrates that the USPTO has repeatedly recognized that the term "xbox" is entitled to trademark protection.
6.6 Respondent also argues that "xobx" is not confusingly similar to XBOX. Typographical error variations and misspellings of trademarked terms have long been found to be confusingly similar. Yahoo! Inc. and GeoCities v. Data Art Corp., et al., WIPO Case No. D2000-0587. On the web site to which the domain name at issue resolves, Respondent has placed a link to Complainant's web site (without identifying Complainant) for the benefit of those who have arrived there by misspelling or mistyping Complainant's trademarked product name. This is, in and of itself, an admission of confusing similarity.
6.7 Respondent's explanation of how he arrived at the SLD "xobx" defies all credulity. In fact, Respondent's agent apologizes for the fantastic nature of the SLD's adoption. See paragraph 4.13, above, last sentence of quoted material. The Respondent is using the domain name at issue to resolve to a Respondent's web site, which contains direct links to web sites at which the goods of Complainant and those of Complainant's competitors are being offered for sale by a third party. The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. Automobile Atlanta v. Wayne R. Dempsey, eResolution Case No. DeC/AF 0173.
6.8 The final question to be answered is whether the domain name at issue been registered and is being used in bad faith.
6.9 Respondent registered the domain name at issue one day prior to the commercial release of Complainant's product, the release and release date of which had been the subject of much fanfare. Is it to be believed that Respondent and its agent, who is an experienced computer programmer and who expresses profound antipathy for Complainant and its business practices, was unaware of the pending product release and name when it registered the domain name at issue? Such a coincidence is clearly beyond belief. The timing of the registration alone demonstrates Respondent's bad faith in registering the domain name at issue.
6.10 Respondent is using the domain name at issue to resolve to a web site that features pictures of products that are competitive with the trademarked products of Complainant and that features links to a commercial web site at which the trademarked products of Complainant and similar products of Complainant's competitors are offered for sale. Respondent obviously derives commercial benefit from driving traffic to the commercial web site. Pacific Telesis Group v. E Smith d/b/a The Ripe One, WIPO Case No. D2001-1053.
6.11 Indeed, Respondent recognizes that users will arrive at its web site expecting to find Complainant's web site dealing with Complainant's trademarked products, and that users have arrived there through typographical error. This alone gives rise to a finding of bad faith registration and use. Alta Vista Company v. Saeid Yomtombian, WIPO Case No. D2000-0937.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <xobx.com> be transferred to the Complainant.
M. Scott Donahey
Dated: April 11, 2003