The Complainant is Microsoft Corporation of Redmond, Washington, United States of America, represented by Kennedy Van der Laan, the Netherlands.
The Respondent is GooHoo of Veghel, the Netherlands, represented by ICTRecht, the Netherlands. 2. The Domain Names and Registrars
The disputed domain names (the “Domain Name 1”) and (the “Domain Name 360”) are registered with SIDN through D and R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 24, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain names (together: the “Domain Names). On June 25, 2013, SIDN transmitted by email to the Center its verification response confirming that the 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 the 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. The Response was filed with the Center on July 15, 2013.
On July 19, 2013, SIDN commenced the mediation process. On August 21, 2013, SIDN extended the mediation process until September 17, 2013. On August 26, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem Hoorneman as the panelist in this matter on October 4, 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.
Due to exceptional circumstances, the Panel has found it necessary to extend the timeframe for the rendering of the decision to the date indicated under the Panel's concluding order, at the end of the decision. 4. Factual Background
The Complainant is a leading manufacturer of software and related products and services, with a worldwide reputation. In 2001, the Complainant launched the XBOX video game entertainment system, along with associated software and accessories. In 2005, the Complainant introduced its second generation gaming console platform under the trademark XBOX 360. On May 21, 2013, the Complainant announced the new generation of the XBOX game console, called the XBOX ONE, which will be launched in November 2013.
The Complainant is holder of, inter alia, the following registrations for its XBOX trademark (the “XBOX Trademark”):
- the Community word mark XBOX, with registration no. 1611235, registered on August 6, 2001 for goods in class 9, including video game players, accessories and computer software for playing video games; and
- the Community word mark XBOX, with registration no. 1747609, registered on May 28, 2003 for goods and services in classes 16, 35 and 41, including entertainment and information services relating to computer games.
The Complainant is also holder of, inter alia, the following registrations for its XBOX 360 trademark (the “XBOX 360 Trademark”, and together with the XBOX Trademark: the “Trademarks”):
- the Community word mark XBOX 360, with registration no. 4437083, registered on May 11, 2007 for goods and services in classes 9, 14, 16, 18, 25, 28, 35, 38 and 41, including game consoles, accessories, computer software for playing video games and entertainment and information services relating to computer games; and
- the Benelux word mark XBOX 360, with registration no. 795754, registered on March 20, 2006 for goods in class 9, including game consoles, accessories, and computer software for playing video games.
The Complainant is also commercially active on the Internet and holder of various domain names containing the Trademarks, including , , and .
The Domain Name 1 was registered by the Respondent on May 21, 2013.
The Domain Name 360 was first registered on May 17, 2010. The Respondent became the current registrant of the Domain Name 360 by change of ownership on March 3, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its Trademarks, as the Domain Names incorporate the XBOX Trademarks in their entirety and the Domain Name 360 also incorporates the XBOX 360 Trademark in its entirety. The addition of such generic terms as the English word “games” and the Dutch word “kopen” (“buy” in English) to the Domain Name 360 does not prevent confusion. The same holds for the addition of the generic number “1” to the Domain Name 1.
The Complainant claims that the Respondent has no rights to or legitimate interests in the Domain Names. The Complainant was not aware of the existence of the Respondent and has never authorized the Respondent to use its Trademarks in the Domain Names. In addition, the Complainant contends that the Respondent is not commonly known by the name “xbox1” or “xbox360gameskopen”.
The Complainant argues that there is no legitimate noncommercial or fair use of the Domain Names. The Domain Name 1 redirects visitors to the Domain Name 360, which is linked to a website where XBOX products can be bought. On this website, however, the Respondent describes itself as primarily a reseller of products of Nintendo, a competitor of the Complainant. Also, the website contains links to the Facebook page and to the main website of the Respondent connected to the domain name , on which it offers for sale several competing products to the XBOX products, in particular the Wii and Gamecube of Nintendo and the Playstation 2 and 3 of competitor Sony. Therefore, the Respondent not only offers original goods under the Trademarks, but also identical goods that originate from other companies in competition with the Complainant.
Also, on the website linked to the Domain Names the Respondent does not accurately and prominently disclose its relationship with the holder of the Trademarks, i.e. the Complainant. The Respondent only discloses its own identity on the website and merely in a non-prominent manner, at the bottom of the page.
In this regard, the Complainant refers to the requirements for the legitimate use by resellers of domain names which incorporate trademarks, as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. It follows from the foregoing that at least two of these requirements are not met, as the website connected to the Domain Names is not used to sell only trademarked goods and, secondly, the relationship with the trademark holder is not accurately and prominently disclosed.
In addition, the Complainant points out that the date of registration of the Domain Name 1 (May 21, 2013) coincides with the announcement of the XBOX ONE console by the Complainant. In light of this timing, the Complainant argues that it is very likely that the Respondent aimed to draw traffic from Dutch Internet users to the website linked (via the Domain Name 360) to the Domain Name 1, thereby taking advantage of the confusion created by the use of the Trademarks.
The Complainant asserts that the Domain Names have been registered or are being used in bad faith. According to the Complainant, it is inconceivable that the Respondent was not aware of the well-known Trademarks at the time of registration of the Domain Names, which is illustrated by the fact that the Domain Name 1 was registered on the same day the new XBOX ONE console was officially announced by the Complainant. Therefore, the Respondent registered the Domain Names in bad faith.
The Complainant further contends that also the use by the Respondent of the Domain Names is in bad faith, as the Respondent intentionally misleads Internet users to the Respondent’s website for commercial gain using the confusion which it creates by using the Trademarks in the Domain Names. The use by the Respondent as a reseller of Domain Names incorporating the Trademarks without some distinguishing features is also a strong indicator of use in bad faith. B. Respondent
The Respondent contends that the Domain Names are not confusingly similar to the Complainant’s Trademarks, as the Domain Names contain elements in addition to the Trademarks, namely the number “1” and the words “games” and “kopen”, respectively. Also, the websites currently linked to the Domain Names both indicate clearly that the sites are operated by the Respondent.
The Respondent claims it has rights to and legitimate interests in the Domain Names. According to the Respondent, it is making a legitimate and noncommercial use of the Domain Name 1, as it registered the Domain Name to start a website which brings Internet users the latest XBOX ONE news, without any advertising and without any commercial gain. The Respondent points out that the Domain Name 1 at this time shows a web page indicating (in translation) that “Goohoo Gameshops is currently constructing this website: The no.1 Xbox (One) news site.”
As to the Domain Name 360, the Respondent claims it has been using the website under this Domain Name as a legitimate reseller of XBOX 360 products legally purchased within the European Economic Area. In this regard, the Respondent too refers to the requirements set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Respondent claims that all of the four criteria mentioned therein have been met by the Respondent in respect of the Domain Name 360. Currently, no goods of other trademarks are sold or mentioned on the concerned website in its current form. Also, the website now accurately discloses the relationship with the Complainant, as the bottom of the website now reads (in translation) that “this website and its owner (Goohoo) do not have a commercial relation with Microsoft. Visit the official website of Microsoft on www..”
Finally, the Respondent claims that it has not registered and is not using the Domain Names in bad faith. The Respondent contends it registered the Domain Name 1 to start a news site about the XBOX One. Further, the Respondent does not intentionally mislead Internet users, since the Domain Name 1 does not redirect to the website connected to the Domain Name 360 or to any other website, is used for a noncommercial purpose and does not contain any advertising or other commercial intention to profit.
The Respondent contends that it registered the Domain Name 360 to start a website thereunder and use it to sell XBOX 360 products in a legitimate and bona fide way. Finally, none of the bad faith circumstances mentioned in article 3.2 of the Regulations exist nor have these been substantiated by the Complainant. 6. Discussion and Findings
Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer the Domain Names must meet three cumulative conditions:
a. Each of the Domain Names 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 Names; and
c. The Domain Names have been registered or are being used in bad faith.
The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Names have been registered or are being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations. A. Identical or Confusingly Similar
The Complainant has based its Complaint on the Trademarks and has submitted copies of its Benelux and Community trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks qualify as trademarks protected under Dutch law.
It is established case law that the country code Top-Level Domain (ccTLD) “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name 360 is confusingly similar to the Complainant’s Trademarks, because the Domain Name 360 incorporates the Trademarks in their entirety. The Domain Name 360 differs from the Trademarks only in that the Trademark is followed by two generic or descriptive terms, namely “games” and “kopen” (in English “buy”). The addition of such generic or descriptive terms does not eliminate the confusing similarity with the Trademarks (see: Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; LEGO Juris A/S v. Nick Terlouw,WIPO Case No. DNL2011-0023; Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; and Boels Verhuur B.V. v. Edoco LTD.,WIPO Case No. DNL2010-0020). Rather, the additional term “games” adds to the confusion as it describes a type of product manufactured and sold by the Complainant under its Trademarks (see: Aktiebolaget Electrolux v. Buisman-Rosbergen V.O.F.,WIPO Case No. DNL2012-0004).
The Domain Name 1 is also confusingly similar to the Complainant’s XBOX Trademark, because the Domain Name 1 incorporates the XBOX Trademark in its entirety. The Domain Name 1 differs from the XBOX Trademark only in that the XBOX Trademark is followed by the generic number “1”. Rather, the additional number “1” adds to the confusion as the newly announced version of XBOX game console to be manufactured and sold by the Complainant under its Trademarks is named XBOX ONE.
Therefore, the Panel finds that the Domain Names are confusingly similar to the Trademarks. B. Rights or Legitimate Interests
The Complainant must demonstrate that the Respondent has no rights to or legitimate interests in the Domain Names. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or legitimate interests, and the Respondent fails to rebut this (see: Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The record does not include any indication that the Respondent has any relevant trademark or trade name rights regarding the terms “xbox1” and “xbox360gameskopen”. The Complainant has not licensed or otherwise permitted the Respondent to use the Trademarks. The Respondent is not an authorized sales or services agent or dealer of goods under the Trademarks, but may be considered a reseller of the products of the Complainant.
Like any other reseller, the Respondent has every right to buy and sell (original) XBOX products. That right however is not relevant to this administrative proceeding; what is at issue here is whether the Respondent may use the Complainant’s Trademarks as a dominant feature of the Domain Names (see, amongst others: American Honda Motor Co. Inc. v. Auto of St. Louis, Jim Feeney,WIPO Case No. D2010-0541).
Within the context of the Regulations, only under specific circumstances may a reseller of trademarked goods have a legitimate interest in a domain name incorporating the trademark. Pursuant to the panel decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the use of a trademark in a domain name by an authorized sales agent of trademarked goods may be considered a bona fide offering of goods, constituting a legitimate interest, if several requirements are met. In later UDRP1 and .NL panel decisions, the same has been acknowledged in respect of such use by an unauthorized reseller, such as the Respondent (see amongst others: Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074; Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; and Bayerische Motoren Werke Aktiengesellschaft v. Linus Geerts,WIPO Case No. DNL2012-0030).
The referenced requirements include, at minimum, the following: (1) the Respondent must actually offer the goods and services at issue; (2) the website must sell only the trademarked goods; (3) the website must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (4) the Respondent must not try to “corner the market” in domain names that reflect the Trademarks (see also: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3).
It follows from article 3.1(a) of the Regulations that such a bona fide offering of goods, meeting (at least) the above requirements, must have already been the case before the Respondent had any notice of the dispute. This is the same under the UDRP (applicable to, e.g., “.com” domain name disputes), the relevant provisions of which are essentially identical to the provisions of the Regulations (see, e.g., paragraph 4(c)(i) of the UDRP). It has been established in numerous UDRP panel decisions that in this respect the panel looks at pre-notification content. As the information submitted by the parties to the Panel does not show the existence of any warning letter or other correspondence or notice prior to this proceeding, the notification of the Complaint must be considered the first notice of this dispute to the Respondent. (See: Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,WIPO Case No. D2000-0461; R.T. Quaife Engineering, Ltd. And Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, owner of Bill’s Incorporated d/b/a Bill’s Isuzuperformance,WIPO Case No. D2000-1201; Leap Real Estate Systems, LLC v. BytePlay Limited, WIPO Case No. D2009-1290; American Honda Motor Co. Inc. v. Auto of St. Louis, Jim Feeney,WIPO Case No. D2010-0541; and Doka Nederland B.V. v. Media Village B.V.,WIPO Case No. DNL2010-0009).
It appears from the Complaint and the Annexes thereto that, prior to the Respondent having notice of this dispute, the Domain Name 360 directed to a website that did not comply with all the aforementioned Oki Data requirements.
On the website linked to the Domain Name 360 the Respondent actually offered, and still offers, the goods at issue. Also, the Respondent cannot be said to corner the market, as the Complainant holds various domain names incorporating the Trademarks, such as , , and .
However, prior to notice of the dispute the website cannot be said to have offered only the trademarked goods, as the website explicitly indicated that the Respondent also offers and sells competing products (albeit through a link to another website). Also, the website did not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant. In fact, the website did not contain any reference to the Complainant at all. The indication on the website that the Respondent “since 2013 also [sells games] for the Microsoft Xbox 360 through [this] special Xbox 360 Shop” only added to the likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Since the date of notification of the Complaint, the Respondent has changed the content of the website to which the Domain Name 360 resolves. Because this change occurred after the Respondent received notice of the dispute, this change shall not be considered in assessing the Respondent’s possible legitimate interest in the Domain Name 360 (see: Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,WIPO Case No. D2000-0461; American Honda Motor Co. Inc. v. Auto of St. Louis, Jim Feeney,WIPO Case No. D2010-0541; and Doka Nederland B.V. v. Media Village B.V.,WIPO Case No. DNL2010-0009). That said, the Panel notes that the website in its current form still does not appear to meet the Oki Data (minimum) requirements: the website does now contain a disclaimer on each page indicating that the Respondent does not have any commercial relations with the Complainant, but this disclosure is hardly prominent as it is included in small font size letters at the bottom of the page, which can only be found by scrolling down on the page (i.e. the disclaimer initially does not appear on the computer screen of an Internet user visiting the website, who will need to navigate to the bottom of the page to find it). Particularly in the case of an unauthorized reseller, the Panel finds in the context of .NL precedent that such a disclosure should be made more prominently.
As for the Domain Name 1: on the date of notification of the Complaint this Domain Name redirected visitors to the same website connected to the Domain Name 360, so that the considerations above also apply to the Domain Name 1 as it was used pre-notification. However, post-notification this redirection has been terminated and the Domain Name 1 currently directs to an ‘under construction’ page suggesting that the Respondent is making preparations for a news site about the coming XBOX ONE product. On this basis, the Respondent claims to now make a legitimate noncommercial use of the Domain Name 1.
In the first place, the Panel finds that such a change, occurring after notice of the dispute, should not be considered in assessing the Respondent’s possible legitimate interests in the Domain Name 1 (see also: Tinfos Jernverk AS v. BigD,WIPO Case No. D2002-0446; and American Honda Motor Co. Inc. v. Auto of St. Louis, Jim Feeney,WIPO Case No. D2010-0541). Even assuming that it should, the change is unavailing for the Respondent’s case here, as the website’s post-notification content would not create a legitimate interest.
It has been held in many UDRP panel decisions in respect of fan or tribute (or criticism) sites, that the registrant of such a noncommercial site may only have rights and legitimate interests in the domain name that includes the complainant's trademark if (a) the site is actually and actively in use, (b) clearly distinctive from any official site, and (c) noncommercial in nature (see: WIPO Overview 2.0, paragraph 2.5, including the referenced UDRP panel decisions mentioned therein). The Panel finds that these principles apply similarly in respect of a ‘news’ site aimed at information on a particular trademarked product. None of these criteria is met in the case at hand. As the Domain Name 1 currently only shows an ‘under construction’ page, it cannot be said to be actually and actively in use. Also, the website is not clearly distinctive from any official site. As noted in previous UDRP panel decisions, with which this Panel concurs, this is especially the case if the respondent is using only the trademark as the domain name (i.e. without any distinguishing additions), as that may be understood by Internet users as impersonating the trademark owner. In the Panel’s view, this is also (virtually) the case at hand. Finally, the Panel is not convinced that the suggested use is genuinely of a noncommercial nature. Particularly given the pre-notification redirection to a clearly commercial website, the Panel considers that the suggested noncommercial use is rather primarily a pretext for commercial advantage to be obtained (see, for example: Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000).
Thus, the Panel finds that also the current parking page (assuming it were relevant) does not demonstrate that the Respondent is making a legitimate noncommercial use of the Domain Name 1, without intent for commercial gain to misleadingly divert consumers.
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in either of the Domain Names under the Regulations. C. Registered or Used in Bad Faith
The registrations of the Trademarks predate the registrations of the Domain Names by several years. As the Respondent’s website offers goods under the Trademarks, the Panel deems it certain that the Respondent was aware of the Complainant’s well-known Trademarks when registering the Domain Names. For the Domain Name 1, a further indicative circumstance in this regard is that the Domain Name was registered on the same day the new XBOX ONE console was officially announced by the Complainant.
As of registration and until notice of this dispute, both of the Domain Names, incorporating the Trademarks and thereby attracting Internet users, were used for a webpage that explicitly indicated, and also linked to, a website that also offers products other than the Trademarked goods. Therefore, the Panel concludes that the Domain Names were registered and being used by the Respondent for commercial gain, by intentionally attracting Internet users to its website where the Respondent is also offering goods of competitors of the Complainant, through the likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This constitutes evidence of bad faith in terms of the Regulations (article 3.2(d)) (see: Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; and Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067).
The changes made by the Respondent to the websites connected to the Domain Names after the Complaint was filed and notified do not alter this. Also in its current form, the website connected to the Domain Name 360 still does not meet the Oki Data requirements and therefore cannot be said to be used for the bona fide offering of goods and/or services.
Furthermore, the evidence brought before the Panel indicates that at the time of, and following, registration, there was no intention to link the Domain Name 1 to a noncommercial (news) site. Rather, the Domain Name 1 redirected to the website linked to the Domain Name 360 which did not hold any information on the XBOX ONE, but advertised other XBOX products and, to some extent, competing products as well, thus providing commercial gain for the Respondent using the confusion created by the use of the XBOX Trademarks in the Domain Name. Also currently, the Domain Name 1 still does not connect to a genuine and active noncommercial website, but rather to a parking page.
Finally, the fact that the Respondent made the mentioned changes to the websites only after the Complaint was filed and notified is also considered a circumstance that is indicative of bad faith. Such behavior – and in this case in particular the sudden change from a commercial to a suggested noncommercial use – can be regarded as an attempt to forestall an unfavorable result in the proceeding (see: Stoxx A.G. v. Pandoro Golf S.L.,WIPO Case No. D2002-0303; and Tinfos Jernverk AS v. BigD,WIPO Case No. D2002-0446).
On the above grounds, the Panel finds that the requirements of registration or use in bad faith pursuant to article 2.1(c) of the Regulations have been met in respect of the Domain Names. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Names and be transferred to the Complainant.
Willem Hoorneman
Panelist
Date: November 13, 2013
1 “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), and “[t]aking into account that the Regulations are to a large extent based on the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), cases decided under both the Regulations and the UDRP are relevant to this proceeding” (see Bayerische Motoren Werke Aktiengesellschaft v. Linus Geerts,WIPO Case No. DNL2012-0030).
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