Nominet UK Dispute Resolution Service

DRS 03464

Microsoft Corporation v. M Marky

Decision of Independent Expert

1.	Parties

Complainant:		Microsoft Corporation 
Country: 		US

	  

Respondent:		M Marky  
Country:		US

2.	Domain Name

2.1	x-box360.co.uk (“the Domain Name”).

3.	Procedural Background

3.1	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service (“DRS”) Policy and Procedure, Version 2 of September 2004 (“the Policy” and “the Procedure” respectively)

3.2	Nominet received the Complaint on 23 February 2006.  On the same day, it validated it and sent it to the Respondent, with a letter advising the Respondent that it had 15 working days, until 17 March 2006, to submit a response.         

3.3	The Respondent failed to submit a Response by 17 March, or at all.  The parties were informed on 20 March 2006 that if the Complainant paid the requisite fees by 3 April 2006, the dispute would be referred to an independent expert and the fees were paid.

3.4	After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 29 March 2006.

4.	Outstanding Formal/Procedural Issues (if any)

4.1	Service 

4.1.1	I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet (“the Contract”), clause 14 of which incorporates the Policy and Procedure by reference. The Contract requires a registrant’s details to be entered in the Register (clause 4.1), and the registrant agrees to ensure that Nominet has its correct postal address, telephone and fax number and email address. Certain details are also posted on the public WHOIS database.  Failure to provide correct details, or to keep them up-to-date, may be grounds for cancellation or suspension of a domain name (clause 17.2). 

4.1.2	The relevance of this, is §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet’s discretion, by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@<the Domain Name in dispute>; or to any email addresses shown on any active web pages the domain name resolves to.  Other communications are also by fax, first class post or email (§2(b)). 

4.1.3	Nominet has provided me with a copy of the Respondent’s Register entries and WHOIS details.  On the Register for the Domain Name, the postal address given for the Respondent is the Boynton Beach address set out at the top of this decision.  The Respondent’s email address is given as solidgroundson@aol.com.

4.1.4	Nominet served the Complaint on the Respondent on 23 February 2006, by: 

(a) by email to solidgroundson@aol.com; 

(b) by email to postmaster@x-box360.co.uk. 

A delivery failure report was received for the email to postmaster@x-box360.co.uk. No delivery failure report was received for the solidgrounds@aol.com address so that appears to have been delivered.    

4.1.5	In any event, the Procedure stipulates that the postmaster@<domainname> style will be used for service, §2(a), and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to his details.  The Complaint is therefore deemed by the Procedure to have been served on 23 February 2006, the date of the emails.

4.2	Default 

4.2.1	Although the Respondent has failed to submit a Response, the Procedure does not provide for a default decision in favour of the Complainant.  The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure.  However an expert may draw such inferences from a party’s default as appropriate, see §15(c), and I indicate below where I am drawing inferences.

5.	The Facts

5.1	The Complainant is a well-known international manufacturer of computer operating systems, computer software and related products and services, including gaming hardware and associated games. Since November 2001, Microsoft has manufactured gaming hardware and associated games which it sells and markets under the XBOX brand and, since November 2005, under the XBOX 360 brand.

5.2	The “WHOIS” search provided to me by Nominet shows that the Respondent registered the Domain Name on 24 April 2005.  Nominet also provided me with a print out of the website to which the Domain Name resolves as at 23 February 2006.  

5.3	When I accessed the site on 29 March 2006, it contained similar content, namely Google adds which I understand are automatically generated by Google dependant on what is being searched for on the site.  The print out of the site as at 23 February 2006 includes, by way of an advertisement, the words “Xbox360” which are a hyperlink, followed by the words “Get Amazing Deals on Xbox’s. Hurry –New Xbox 360 Included.”        

5.4	We have no further information concerning the Respondent.  

6.	The Parties’ Contentions

Complainant’s Case:

6.1	The Complainant claims that it has Rights in respect of a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.  

6.2	In particular, (and I have largely retained the Complainant’s own words here) as to  Rights:

Registered marks 

6.2.1	The Complainant has registered a number of trade marks throughout the world which are, or include, the word XBOX and which are registered in various classes. For the purposes of the Complaint, the Complainant is the registered proprietor of: 

(a) The word mark XBOX: 

(i) in all countries of the European Union, including the UK, through Community trade mark registration number 1611235 dated 14 April 2000 for a range of goods and services in class 9, full details of which are attached at Exhibit A; 

(ii) in all countries of the European Union, including the UK, through Community trade mark registration number 1747609 dated 10 July 2000 for a range of goods and services in classes 16, 35 and 41, full details of which are attached at Exhibit B; 

(iii) in all countries of the European Union, including the UK, through Community trade mark registration number 2102804 dated 26 February 2001 for a range of goods and services in classes 16, 18, 25 and 28, full details of which are attached at Exhibit C; 

(iv) in all countries of the European Union, including the UK, through Community trade mark registration number 2682417 dated 3 May 2002 for a range of goods and services in classes 9 and 18, full details of which are attached at Exhibit D; 

(b) the device mark XBOX: 

(i) in all countries of the European Union, including the UK, through Community trade mark registration number 2107738 dated 28 February 2001 for a range of goods and services in classes 9, 38 and 41, full details of which are attached at Exhibit E; and 

(ii) in all countries of the European Union, including the UK, through Community trade mark registration number 2902005 dated 23 October 2002 for a range of goods and services in classes 9 and 18, full details of which are attached at Exhibit F; (together, the Trade Marks).

Rights from use—unregistered marks  

6.2.2	The Complainant has used the XBOX name on its games consoles and related products since November 2001. XBOX was a significant product for both the Complainant and the gaming industry as a whole. In the UK alone, the Complainant sold over US$2.1 million worth of XBOX consoles. Based on this and on the general interest amongst gamers in owning and playing the latest products, it was inevitable that the launch of the Complainant’s successor XBOX product would involve substantial media interest, significant industry attention and considerable marketing spend by the Complainant. 

6.2.3	In May 2005 the Complainant announced the international launch of the new version of its XBOX games console under the name XBOX 360 (the Brand). While the official announcement of the XBOX 360 name occurred on 12 May 2005, the name of the product appeared in the press in the UK as early as 14 April 2005. A print out of a page from “The Edge” website (an online gaming magazine) discussing the Complainant's XBOX 360 product is at Exhibit G.

6.2.4	The Complainant has established an Internet website located at domain names comprised of the Trade Marks and/or the Brand, including “xbox.com”, “xbox360.com” and “xbox360.co.uk” (the Microsoft Website). 

6.2.5	The Microsoft Website provides users with information about the XBOX and XBOX 360 consoles, games and accessories and offers these items for sale. A copy of a printout of the home page for the Microsoft Website dated 22 February 2006 is at Exhibit H. 

6.2.6	Each of the Trade Marks and the Brand is extensively supported by advertising and promotion and is extremely well known to the general public in the UK. 

6.2.7	The Complainant has “Rights” (within the meaning set out in the Nominet DRS Policy) in the Trade Marks and the Brand.

6.2.8	The Domain Name (discounting the first and second level suffixes which are of no relevant significance and wholly generic) is identical or similar to the Trade Marks and/or the Brand. According to the Nominet decision in PartyGaming Plc v Elsie Sorilla (DRS 02783), it is appropriate to discount whether or not there is a hyphen between two parts of a domain name, as the use of a hyphen is immaterial and does not alter the identical or similar nature of the name. As a result, once the hyphen in the Domain Name has been discounted, the Domain Name is identical to the Brand. 

6.2.9	The Domain Name is also similar to the Trade Marks.  Again, discounting the hyphen, the Domain Name contains the Trade Marks with the addition of “360”.

6.3	Abusive registration. The Complainant contends that in the hands of the Respondent, the Domain Name is an Abusive Registration for the reasons set out below:

6.3.1	The Purpose of the Registration was Abusive 

6.3.1.1	The Complainant’s Rights in the Trade Marks predate the Respondent’s registration for the Domain Name and the name of the Brand was already known to the public before the Respondent’s registration. 

6.3.1.2	The Respondent has no right or legitimate interest in the Domain Name. There is no relationship between the Respondent and the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Marks or the Brand or register a domain name incorporating the Trade Marks or the Brand. The Complainant is not a customer of the Respondent.

6.3.1.3	The name of the Complainant’s new XBOX product was made available to the public from mid-April 2005 at the latest (see Exhibit G) and the Domain Name was registered on 24 April 2005. The name XBOX 360 is distinctly referable to the Complainant and is a famous brand. The Respondent would have known at the time of registration that the Complainant would engage in an extensive promotion of its new XBOX 360 product and that the XBOX 360 Brand would quickly become well-known. In registering the Domain Name, the Respondent sought to appropriate the goodwill of the Complainant and, therefore, took unfair advantage of the Complainant’s Rights. 

6.3.1.4	According to the Nominet decision in Chivas Brothers Limited v David Willian Plenderleith (DRS 292) where the Respondent registers a domain name: (a) which is identical to a name in respect of which the Complainant has rights; (b) that name is exclusively referable to the Complainant; (c) there is no obvious justification for the Respondent having adopted that name for the domain name; and (d) the Respondent has come forward with no explanation for having selected the domain name, it will ordinarily be reasonable for an expert to infer that the Respondent registered the Domain Name for a purpose and that that purpose was abusive. 

6.3.1.5	In this case, the Domain Name is identical to the Brand and the Brand is exclusively referable to the Complainant. There is no justification for the Respondent having registered the Domain Name and, although the Respondent has not yet had an opportunity to put forward an explanation for its selection of the Domain Name, there cannot be an explanation for the registration of the Domain Name other than that the Respondent had the Complainant’s XBOX 360 Brand in mind. It follows that the registration is abusive.

6.3.2	Use in Abusive manner  

6.3.2.1	The Respondent has made a number of uses of the Domain Name. 

6.3.2.1.1	A Nominet “whois” search shows that the Respondent registered x-box360.co.uk (the Domain Name) on 24 April 2005. As of 14 December 2005, the WHOIS details of the registration showed a UK address for the Respondent. A check of the WHOIS details on 11 January 2006 showed that the details of the Respondent had changed to an address in the USA. Print outs of the two different sets of WHOIS details for the Domain Name are at Exhibits I and J. 

6.3.2.1.2	From at least 14 December 2005, the Domain Name has been in use. On that date, the Domain Name linked to a website (the Respondent’s Website) which offered x-box360.co.uk email addresses for sale. A print out of the Respondent’s Website at that date is at Exhibit K. 

6.3.2.1.3	On 11 January 2006, the content of the Respondent’s Website had changed. When the Respondent’s Website was accessed simultaneously from two different computers, one in the United Kingdom and one in the United States of America, it also featured different content. One computer showed links to dating websites (see Exhibit L) and the other showed links to computer and gaming websites (see Exhibit M). Some of these links offer XBOX 360 machines and associated games as well as competitor machines and associated games (e.g. Sony’s Playstation 2 and Nintendo’s Gamecube) for sale. Exhibit N shows print outs of some of the websites which the Respondent’s Website links to and which sell competitor products. 

6.3.2.1.4	On 31 January 2006, the Respondent’s Website had again changed and again showed different content depending on where it was accessed from. Exhibit O shows two print outs from the Respondent’s Website which were accessed at the same time. Both versions of the Respondent’s Website featured links to computer and gaming websites, including those of the Complainant’s competitors.

6.3.2.2	Whatever use the Respondent makes of the Domain Name, the Respondent’s Website will inevitably attract more traffic than through the use of a generic domain name, by virtue of the clear link between the Domain Name and the Complainant’s XBOX 360 product. Again, the Respondent’s use of the Domain Name takes unfair advantage of the Complainant’s Rights and demonstrates that the registration is abusive.

6.4	Respondent’s Case:

6.4.1	As noted above, no Response has been received. 

Discussion and Findings:

7.	General

7.1	.Co.uk domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a complainant to prove 2 elements: 

"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."

7.2	A Complainant bears the burden of proof and must prove both elements on the balance of probabilities.  If the scales are evenly balanced, doubts should be resolved in favour of the current registrant, see the decision of the DRS Appeal Panel in Seiko v Designer Time, DRS 00248 at §9.      

7.3	The DRS is concerned solely with Abusive Registration.  The DRS does not decide issues of trade mark infringement or passing-off, which are matters for the courts.  I will not therefore make any finding as to those.  The Policy is a “stand alone” one –and I am to decide this Complaint on the basis of the parties’ submissions, the Policy and the Procedure, see §16(a) of the Policy.  It is however permissible to refer to, and consider, trade mark authorities but they are persuasive, not binding.  The same is true of decisions by other DRS experts and appeal panels. 

8.	The Complainant’s Rights

8.1	Rights under the Policy include but are not limited to rights enforceable under English law and this extends to rights to registered and unregistered (or common law) trade marks and contractual rights in relation to the same.  This is not a high threshold, see DRS Appeal Panel in Seiko v Designer Time, DRS 00248 at §9.  

8.2	The Complainant has submitted at Exhibits A-F printouts from CTM-Online evidencing its registrations of 6 Community Trade Marks (CTM). Four are word marks for XBOX in various classes and two are device marks for XBOX.  The Complainant clearly has rights in its registered trade marks for XBOX. 

8.3	In addition, the Complainant says it has rights in the name XBOX and XBOX360 that would be enforceable in passing-off as a result of its actual use of the same. It is unnecessary to consider these in relation to XBOX as the registered marks suffice.  In relation to XBOX360 therefore the Complainant can protect the first part of the name.  In addition the whole, XBOX360, is a ‘Brand’ names or product name, and these have always been protected by the law of passing-off provided that a substantial number of members of the public associate the name with a complainant, so that it has reputation or goodwill in the name.   

8.4	In this respect only, the Complaint is somewhat conclusory, saying only “[e]ach of the Trade Marks and the Brand is extensively supported by advertising and promotion and is extremely well known to the general public in the UK.”  The Complainant says, §6.2.2 that it has used the XBOX name since 2001 and has sold over US$2.1m of them.  We are only concerned with the use of XBOX360 and whether it gives rise to rights protected in passing-off.  No figures are provided for the XBOX360 and nor am I supplied with any of the usual advertising or promotional material, although the Complainant says it unveiled the name XBOX360 to the public in mid April 2005 and announced the launch of the product in May 2005, see §6.2.3.  It also relies on its website and its 3 Domain Names using the name see §§ 6.2.4-5.  The Complainant also claims that XBOX360 is a famous brand.  Personally I do not think that is so obvious that no evidence was required –particularly given the relatively short period of trading under the name.   Despite this, I do find that the Complainant has Rights in the name XBOX360.        

8.5	As to whether those names or marks are identical or similar to the Domain Names; suffixes are to be ignored, see Appeal in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.  Whether it is capitalized or not, is clearly irrelevant.  The issue here is the hypen, but these are also ignored in determining identicality or similarity, see Appeal in Hanna-Barbera v Graeme Hay, DRS 00389.  The Complainant also cites PartyGaming Plc v Elsie Sorilla DRS02783 in support of this proposition.  

8.6	This renders the Domain Name identical to the Brand, that is, the name, XBOX360. The Complainant also relies on the fact that the Domain Name is similar to its registered Trade Marks.  I am satisfied that the Complainant has Rights in a name which is identical to the Domain Name and in registered marks that are similar to the Domain Name.

9.	Abusive Registration 

9.1	The second element a complainant must prove under paragraph 2(a) of the Policy, is that the domain name is an Abusive Registration, defined in paragraph 1, as follows: 
	
"Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the 
time when the registration or acquisition took place, took unfair 
advantage of or was unfairly detrimental to the Complainant's 
Rights; or

ii. has been used in a manner which took unfair advantage of or 
was unfairly detrimental to the Complainant's Rights"

9.2	Factors which evidence Abusive Registration are set out in §3 of the Policy.  The corollary of that is that if one of the factors in §4a is satisfied by a respondent, so that a domain name is not an Abusive Registration, the Complaint must fail.  The factors at both §§3 and 4 are non-exhaustive.  

9.3	The mere fact that the Respondent is using marks/names of another is not enough. There are a myriad of reasons why third parties legitimately use the trade marks of others.  In Sekio v Designer Time DRS00248, the Appeal Panel said:  “There are many different traders who may wish to make use of the trade mark of a third party e.g. the proprietor's licensee (exclusive or non-exclusive), a distributor of the proprietor's goods (authorised, unauthorised or 'grey market'), …or the proprietor's competitor engaged in comparative advertising. …we are not going to attempt to – lay down any general rules governing when a third party can make 'legitimate' use of the trade mark of a third party as a domain name.”  In BMW v Deenik C-63/97, the ECJ held that a secondhand dealer/repairer was entitled use the BMW trade mark in its advertising, subject to fairness which meant he should not use the mark in such a way as to suggest that he was affiliated with or connected with BMW, which the court said was a question of fact in each case.  In essence then, if a domain name makes, or is liable to be perceived as making, the representation that there is something approved or official about their website this would constitute unfair advantage or unfair detriment. BMW and Seiko above have been the subject of numerous subsequent DRS decisions, including: Delloutlet DRS 1805, Vodafoneretail  DRS 445; Epson  DRS 2944, DRS 2962 and 03027 and Skovby v Valentine DRS 02316.  

9.4	In summary then, keeping in mind that Nominet’s is a first come, first served, registration system, which allows those who are not the owner of the off-line marks and names to register names –the mere fact of the Respondent’s registration alone –without more is not enough. We must examine whether there is evidence that that registration or the use made of the Domain Name is Abusive.   

10.	Use   

10.1	The Complainant says that the Respondent is not its licencee nor has the Complainant granted the Respondent some other right to use its marks.  It also says that the Respondent is not a customer of the Complainant.  I am not sure how the Complainant can be so sure of the later assertion.  I would have thought the Respondent could be an owner of an XBOX360, possibly one who wanted to resell it, or indeed he could be a second-hand dealer of XBOX360s.    

10.2	As discussed above, there are legitimate reasons why third parties might make use of the trade mark of another.  These include advertising.  Indeed comparative advertising is a non-infringing use even under the registered trade mark regime as provided for in §10(6) of the Trade Marks Act 1994.  The use of domain names is a valid, and indeed, very popular method of advertising today.  Some law has now emerged in particular in relation to metatags, which is slightly different in that the use is invisible use, however even in relation to registered trade marks, this is acceptable, and is not trade mark infringement see Reed v Reed Business Information [2004] EWCA Civ 159 at §144 et seq.  Domain names are often also used as a form of advertising.  Both uses respond to a search engine request for information by pointing the browser to a website although metatags operate invisibly whereas a domain name can be seen in the browser.  I do not think it can be said that today however, anyone is confused by either method –provided the site itself does not make any misrepresentation. As advertising, the registration of a domain name falls within the rule in BMW, so evidence is required that the Respondent has stepped over the line and made a representation that it has a commercial connection with the Complainant.

10.3	In this case, although the site makes no representation that it is authorised or official, and therefore arguably does not and is not likely to confuse people in terms of §3aii of the Policy, the Respondent is making money from the use of the Complainant’s mark/name as a Domain Name.  If you click on the Ads by Google link on the site the Domain Name resolves to, Ads by Google says:  

“• Display Google ads that are relevant to what visitors are looking for on your site

• Start serving relevant ads within minutes

• When site visitors click on these ads, Google pays you”     

10.4	Ultimately I think this is a step to far in the absence of any explanation from the Respondent that it is genuinely a fan, seller or reseller of the XBOX360.   So without shoehorning this use into a factor in terms of §3 of the Policy, I find that the Respondent’s use takes unfair advantage of/is unfairly detrimental to the Complainant’s Rights.   

11.	Primary Purpose   

11.1	The Complainant also relies on the decision in Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, in which the Expert, and founding father of the DRS, Mr. Tony Willoughby, laid down the following 4 part test which can be usefully applied here.  Where a respondent registers a domain name: 1) identical to a name in respect of which a complainant has rights; 2) that name is exclusively referable to the complainant; 3) there is no obvious justification for the respondent having adopted that name; and 4) the respondent has not come forward with an explanation for having selected the domain name; it will ordinarily be reasonable to infer that the respondent registered the domain name for a purpose and that that purpose was Abusive.   Where applicable, there is no need to revert to the factors in §3 of the Policy.  Clearly this is also applicable here.    

12.	Decision

12.1	I find that the Complainant has Rights in a name which is identical and in marks which are similar to the Domain Name which is an Abusive Registration in the hands of the Respondent.  Accordingly, the Domain Name should be transferred to the Complainant.   

Victoria McEvedy 

12 April 2006