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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
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,
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
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>
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
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
The Complainant seeks the transfer of the domain name from the Respondent to
the Complainant in accordance with paragraph 4(i) of the Policy.
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
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
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
(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
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.
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
Dated: November 13, 2003