Microsoft Corporation v Svetlana Ivanova

WIPO Case No. D2024-2483

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Svetlana Ivanova

Case No. D2024-2483

1. The Parties

The Complainant is Microsoft Corporation, United States of America, represented by D.M. Kisch Inc., South

Africa.

The Respondent is Svetlana Ivanova, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <playxbox.com> (the “Disputed Domain Name”) is registered with Fiducia LLC,

Latvijas Parstavnieciba (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2024. On June 19, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Disputed Domain Name. On July 12, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Private Registration) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on July 16, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on July 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on August 16, 2024.

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The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 27, 2024. The Panel f inds 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, Microsoft Corporation, is an American multinational technology corporation founded in
1975. The Complainant’s portfolio of goods and services of ferings include video games, consoles,

controllers, headsets, accessories and subscription services under the XBOX brand.

The Complainant is the owner of numerous trademarks for XBOX including the following: 

- XBOX, international word mark (including the Russian Federation as designated country) registration
number 1386032 on June 5, 2017, in classes 35, 38, 41, 42, 45; and

- XBOX, United States of America word mark registration number 2646465, on November 5, 2002, in
class 9.

The Disputed Domain Name was registered on April 4, 2011.  According to the Complainant evidence, the Disputed Domain Name resolved to a parking page of fering the Disputed Domain Name for sale. The parking page requested to provide personal and contact details to obtain details on the purchase price of the Disputed Domain Name. The parking page also mentioned that “of fers under $1,000 US are usually not considered”. The Panel observes that the Disputed Domain Name currently resolves to an inaccessible website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the Disputed Domain Name.  

Notably, the Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which it claims to have rights.

The Complainant further claims that the Respondent has no legitimate interests in respect of the Disputed

Domain Name as:

- the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks
or to register a domain name incorporating its XBOX trademark; and

- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad

faith.  According to the Complainant:

- the Respondent knew of the Complainant’s XBOX trademark when registering the Disputed Domain
Name;

- the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website linked to the Disputed Domain Name (the parking page) by creating a likelihood of confusion with the Complainant’s registered XBOX trademark as to the source, sponsorship, affiliation, or endorsement of the parking page, the website or location or of a product or service on its website or location;

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- the Respondent registered and used the Disputed Domain Name with an intention of obtaining
personal details f rom Internet users;

- the Respondent is suggesting to Internet users visiting the website linked to the Disputed Domain
Name (the parking page), that the Complainant is the source of the parking page;

- the Respondent’s passive holding and general offer for sale of the Disputed Domain Name constitutes
evidence of the Respondent’s bad faith; and

- the Respondent is using a privacy protection service to hide its true identity.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark
or service mark for the purposes of the Policy.  WIPO Overview 3.0, section 1.2.1. 

The Panel observes that the entirety of the XBOX mark is reproduced within the Disputed Domain Dame.  In such cases, the domain name will normally be considered confusingly similar to the incorporated mark for

purposes of UDRP standing.  WIPO Overview 3.0, section 1.7. 

Additionally, the Panel finds that the addition of another term – here, “play” – does not prevent a f inding of

confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy.  WIPO

Overview 3.0, section 1.8.   
 

It is well established that generic Top-Level-Domains (“gTLDs”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the

Complainant has rights. 

Based on the available record, the Panel f inds the f irst element of the Policy has been established. 

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name. 

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the

respondent.  As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant).  If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisf ied the second element.  WIPO Overview 3.0, section

2.1. 

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.  The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the

Policy or otherwise. 

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain

Name, and that the Respondent does not seem to have acquired trademark or service mark rights. 

According to the information provided by the Registrar, the Respondent is “Svetlana Ivanova”.  The

Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. 

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests af f iliation with the trademark owner. The correlation between a domain name and the complainant’s mark is of ten central to this inquiry. Even where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it ef fectively impersonates or suggests sponsorship or

endorsement by the trademark owner.  WIPO Overview 3.0, section 2.5.1.  

The Disputed Domain Name incorporates the Complainant’s XBOX trademark in its entirety and merely adds

the descriptive term “play”.  In the Panel’s view, this term can be easily linked to the Complainant’s video game business, especially given the widespread use and reputation of the Complainant’s XBOX trademark. Therefore, the Panel f inds that the Disputed Domain Name carries a risk of implied af f iliation with

the Complainant and cannot constitute fair use.  

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, and the absence of a response, support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3. 

According to the Complainant’s evidence, the Disputed Domain Name appeared to resolve to a parking page of fering the Disputed Domain Name for sale. The parking page also mentioned that “offers under $1,000 US are usually not considered”. Given the nature of the Disputed Domain Name (the Disputed Domain Name

carries a risk of implied affiliation with the Complainant), the Panel finds that the of fering for sale does not

constitute a legitimate noncommercial or fair use of the Disputed Domain Name. WIPO Overview 3.0,

section 2.5.1.

The Panel observes that the Disputed Domain Name currently resolves to an inactive webpage.

 Considering the circumstances of the case, the Panel f inds that this does not amount to any legitimate

noncommercial or fair use or use in connection with a bona f ide of fering of goods and services either. 

The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so.  In the

absence of a Response from the Respondent, the prima facie case established by the Complainant has not

been rebutted. 

Based on the available record, the Panel f inds the second element of the Policy has been established. 

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.     

The Panel f inds that the following circumstances serve as indication of bad faith registration and use:    

- the Disputed Domain Name incorporates the Complainant’s well-known XBOX trademark in its entirety and combines it with a term directly referring to the Complainant’s video game business; 

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- some of the Complainant’s trademarks predate the registration of the Disputed Domain Name by more
than 8 years; and 

- the Respondent did not take part in the administrative proceedings.     

Given the totality of the circumstances discussed above, the current state of the Disputed Domain Name redirecting to a inactive page does not prevent a f inding of bad faith under the doctrine of passive holding.  WIPO Overview 3.0, section 3.3. 

Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy.  

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <playxbox.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/
Flip Jan Claude Petillion
Sole Panelist
Date: September 10, 2024