Microsoft Corporation v. None a/k/a Prakash Prasad Timilsina
Claim Number: FA0906001271165
Complainant is Microsoft Corporation (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bing-news.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2009.
On June 30, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <bing-news.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 20, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 14, 2009.
On July 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Since 1975, Complainant has manufactured, marketed and sold computer software and related products and services, including computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, online news, information and entertainment services, electronic commerce services, and computer publications.
BING is the brand name for Complainant’s search and decision making engine, and various complementary services, which were presented to the press and others under the mark at least as early as May 28, 2009, and which were publicly available through <bing.com> beginning June 1, 2009.
In addition to general search services, Complainant provides BING NEWS services via <bingnews.com> and <bing.com/news>.
The domain names <bing.com> was originally registered on January 29, 1996, and <bingnews.com> on November 7, 2008.
Complainant has applied to register the BING trademark in a number of jurisdictions in including United States Patent and Trademark Office (“USPTO”) (Serial No. 77/681,512 filed March 2, 2009).
Complainant submits that registration of a mark is not necessary to
establish trademark rights under the Policy. Cameron Diaz v.
Complainant submits that the press began speculating as to Complainant’s use of the BING trademark as early as April 3, 2009, after news reports broke regarding Complainant’s USPTO trademark application filing.
There was widespread, global press coverage of the BING name and service leading up to, on, and immediately following the May 28, 2009 launch date, including articles in The New York Times, The Wall Street Journal, CNET, CNN, Barron’s, Reuters, The Sunday Times, and other sources throughout the world including Australia where Respondent resides.
Complainant submits that press coverage and advertising for BING were so pervasive on May 28 and 29, 2009 that BING was already well-known and famous at the time the disputed domain name was registered.
Respondent registered the disputed domain name <bing-news.com> on May 29, 2009, after Complainant announced its BING search engine. By this time, through pre-launch press associating BING with Complainant, and through use and extensive global press coverage on May 28 and 29, 2009, Complainant had acquired goodwill and common law rights in the trademark BING, and the mark was uniquely associated with Complainant by consumers.
Complainant submits that the <bing-news.com> domain name is identical to Complainant’s BING NEWS trademark and confusingly similar to Complainant’s BING trademark which was announced, discussed in global press coverage, and in common law use before Respondent registered the disputed domain name.
Complainant argues that Respondent’s <bing-news.com> domain name incorporates Complainant’s BING trademark in its entirety, adding only the generic word “news” and the URL suffix “.com.” The mere addition of a generic, common term like “news,” which is also a service provided by Complainant, to a highly distinctive term such as BING does not negate the confusing similarity between Respondent’s domain name and Complainant’s mark. See Google Inc. v. Forum LLC, FA 1053323 (Nat. Arb. Forum Oct. 1, 2007) (finding <googlenews.com> confusingly similar to GOOGLE and awarding transfer); see also Nortel Networks Ltd. v. BuyMeBuyMe.com Inc., FA 671847 (Nat. Arb. Forum May 16, 2006) (adding a generic term to a complainant’s mark is not sufficient to distinguish the disputed domain name, especially where the term clearly relates to the complainant’s business); Complainant Corporation v. Teammsn, FA 648204 (Nat. Arb. Forum Mar. 27, 2006) (finding the respondent’s <teammsn.com> domain name confusingly similar to Complainant’s MSN mark because it incorporated Complainant’s mark along with a descriptive term and a top-level domain); Complainant Corporation v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, Oct. 6, 2004) (finding confusing similarity where the domain name only deviated from Complainant’s mark by the addition of the terms “excel training” and the top level domain “.com” to the mark COMPLAINANT); and Yahoo! Inc. v. Wooyoun Cho, FA 146934 (Nat. Arb. Forum, Apr. 16, 2003) (finding the respondent’s <yahooplus.com> domain name to be confusingly similar to the complainant’s YAHOO trademark). Adding a generic top-level domain also does nothing to negate confusing similarity. See Complainant Corporation v. Whois Privacy Protection Serv./Lee Xongwei, D2005-0642 (WIPO Oct. 12, 2005) (“addition of the generic top-level domain “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark”).
Complainant submits that it is beyond coincidence that Respondent registered <bing-news.com> the day after the global announcement of Complainant’s BING services. Plainly the disputed domain name was chosen by Respondent for its association with Complainant and is confusingly similar to the BING trademark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s BING trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate non-commercial or fair use.
WHOIS identifies Respondent as None a/k/a Prakash Prasad Timilsina. Respondent is not commonly known by Complainant’s BING trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use its BING trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Respondent initially pointed <bing-news.com> to a web site entitled “Bing-News Beta News & Articles Sharing Network.” This site featured a logo confusingly similar to Complainant’s BING logo (having an identical color scheme and including an orange dot), and linked to third-party news sources (e.g., the Detroit News) and sponsored advertising.
On June 19, 2009, Complainant contacted Respondent and demanded that it transfer the domain name. On June 20, Respondent replied indicating that its selection of <bing-news.com> on the same day that Complainant announced BING services was “just a coincident.”
On June 23, 2009 Respondent informed Complainant that it had removed the foregoing content from its website and would replace it with unspecified content. At the time of filing of the Complaint the site displayed a table of sponsored links, including links to third party news sources such as ABC News.
Complainant submits that Respondent’s initial use of the disputed domain name to offer a competing news service for commercial gain was, of course, a direct infringement of Complainant’s trademark rights. Complainant submits that the use of a domain name that is confusingly similar to Complainant’s BING trademark to attract consumers to Respondent’s own website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Complainant Corporation v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, Oct. 6, 2004); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
Complainant argues that attempting to pass oneself off as a trademark holder is also not a legitimate use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”).
Complainant submits that Respondent is using the <bing-news.com> domain name to generate click-through revenue by displaying links to third-party products and services, including third-party news sources. Presumably, Respondent receives compensation for directing consumers to these sites. Complainant submits that such use does not qualify as a use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy 4(c)(iii). See Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, Jan. 10, 2007) (finding no legitimate interest in the domain name <fossill.com> where the domain name resolved to a website featuring links to third party websites); Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. SZK.com a/k/a Michele Dinoia, FA 635480 (Nat. Arb. Forum, Mar. 7, 2006) (finding no legitimate interest in the domain name <wwwhewlettpackard.com>, where Internet users who accessed the domain name were redirected to a generic search-engine website featuring links to services in competition with Complainant’s services); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); and WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant submits that Respondent’s use cannot be viewed as a bona fide offering of goods or services since Respondent has clearly taken Complainant’s trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for its own commercial gain. Complainant argues that Respondent is simply exploiting the fact that Complainant’s customers and potential customers will assume that a website located at a domain name incorporating the BING trademark is affiliated with or sponsored by Complainant.
Within four days of receiving initial correspondence from Complainant, Respondent changed its purported business from a news delivery service to a parked page with stated plans to offer “something else that the BING does not do.” It is apparent from this correspondence that Respondent has no genuine business activity at all, and this is further evidence that Respondent has no legitimate interest or rights in <bing-news.com>.
Complainant submits that Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the domain name, Complainant’s BING trademark was familiar to countless consumers worldwide through ubiquitous press coverage.
Within hours of the BING service introduction, Respondent registered this obviously confusing variant of BING and directed it to news services offered under a logo derived from Complainant’s BING logo.
It is clear that Respondent was not only familiar with Complainant’s BING trademark at the time of registration of the domain name, but intentionally adopted a name incorporating the BING mark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its new but well-known mark is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Respondent’s site offers advertising and links to third parties not affiliated with Complainant. Presumably Respondent receives revenue from these links, and this is evidence of bad faith. See Nortel Networks v. BuyMeBuyMe (deriving revenue from links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees’”); Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum Jan. 10, 2007); (holding that respondent registered and used the domain name <fossill.com> in bad faith by diverting computer users to a website featuring links to Complainant’s competitors); MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); and Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
It is obvious that Respondent is using this domain name to intentionally attract, for commercial gain, Internet users to his own website. Respondent has attempted to disrupt Complainant’s service launch and to benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s BING trademark. This conduct of diversion, which is motivated by commercial gain, shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
In his Response, Respondent submits that it merely a coincidence that he registered the domain name in dispute on the “same day” or “just after” Complainant announced the BING service. At that time Respondent was not aware that Complainant “was going to be announcing its BING services” nor was he aware of the nature of the services that Complainant intended to provide.
Respondent was inspired by the name of <bingmail.com.au> which is owned by a third party.
Addressing the color and design of his website, Respondent states that the script and its mechanism was actually designed by a named third party.
While Complainant has alleged
that Respondent’s website established at the <bing-news.com> address had a similar color to Complainant’s
BING website, most people want to use some evergreen colors like Blue, Black,
As Respondent is “poor in logo design”, he used the word (IN CAPITAL) “B” in a simple way having a yellow dot.
Respondent states that to respect Complainant’s intellectual property and trademark BING immediately after realizing that the <bing-news.com> service is too similar to the Microsoft BING service he changed the service he was providing from online News to something else. Now his website at the <bing-news.com> address provides online discussion forum where users post their problems, thoughts and reply. Now this service is not similar to Complainant’s BING service.
Respondent submits that Complainant is not concerned with the domain name but with the content of the website. Respondent argues that he has rights or legitimate interest in the disputed domain name. He has removed the earlier website contents to carry on a fair business.
On June 23, 2009, Respondent received a mail from Complainant’s representative saying that “It is not uncommon for there to be multiple URLs that contain a particular word that may be another party’s trademark. It is really not simply the existence of those domain names but when they were registered and how they are being used in practice”. Respondent submits that this clearly illustrates that Complainant does not have any problem with domain name <bing-news.com> itself but the online news content of his website.
While Respondent asked Complainant about some other domain names that are similar to <bing-news.com>, (i.e., bing.tv, bing-videos.com), Complainant replied that they “offer services that are different from Microsoft’s services rendered under the BING trademark. In this case, you are using the domain name <bing-news.com> for services that are too close to Microsoft’s services which is why we are objecting”. This statement clearly shows that Complainant has a problem with <bing-news.com> content which was online News.
Complainant is inter alia the owner of domain name <bing.com> registered on January 29, 1996, and <bingnews.com> registered on November 7, 2008 and said domain names resolve to a website at which Complainant has established an Internet search engine and provides other services.
Complainant has filed a number of applications for trade mark registration for the BING mark including United States Patent and Trademark Office (“USPTO”) (Serial No. 77/681,512 filed March 2, 2009.
The press began speculating as to Complainant’s use of the BING trademark as early as April 3, 2009.
Complainant’s BING Internet service was launched on May 28, 2009 attracting global publicity.
Respondent registered the disputed domain name <bing-news.com> on May 29, 2009.
Complainant has acquired common law rights in the BING service mark.
The word BING has accrued a secondary meaning sufficient to establish common law rights for the purposes of this Policy and said rights were established quickly on May 28, 2008 when Complainant launched its BING search engine and associated services and prior to the registration of the domain name in dispute by Respondent on May 29, 2009.
Respondent has established a website at the address of the domain name at issue. He initially put news related content on the site but when challenged by Complainant, he changed the content type.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
It is well established that a complainant need not hold a registration of the BING mark to establish rights in that mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights in that mark through a sufficient showing of secondary meaning. This has been accepted since Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000), closely followed by the decsion in Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000).
Because of the global scale of the launch of the BING services, this Panel is satisfied that the word BING had acquired secondary meaning through Complainant’s use of it on May 28, 2009, the launch date of of Complainant’s search engine, sufficient to establish rights to satisfy the requirements of Policy ¶ 4(a)(i).
The distinctive element of both Complainant’s service mark and the domain name in dispute is the word BING. The addition of the hyphen and the word “news” in the domain name do not serve to obviate the similarity. It is well established that the “.com” gTLD extension may be ignored for the purposes of comparison for example in Microsoft Corporation v. Whois Privacy Protection Serv./Lee Xongwei, D2005-0642 (WIPO Oct. 12, 2005) cited by Complainant.
In the view of this Panel, use of the domain name must inevitably cause confusion with the Complainant’s mark on the part of Internet users.
In the circumstances Complainant has satisfied the first element of the test in Policy ¶ 4(a)(i).
Addressing the issue of Respondent’s rights or legitimate interest in the domain name, Respondent’s explanation as to how he came to design and use a logo confusingly similar to Complainant’s BING logo is not plausible. The color scheme was identical in each case and in each case the logo includes an orange dot.
Respondent initially purported to use the website for a news service but when challenged he changed to another use.
Complainant submits that Respondent has “no genuine business activity at all.” This is not exactly correct. Respondent is clearly engaged in the commercial activity of hosting a website that generates pay per click income. In itself this is a genuine business activity however in the present case it is not a bona fide commercial activity because Respondent is taking predatory advantage of Complainant’s goodwill in the BING mark, seeking to attract Internet users who are endeavoring to access Complainant’s service and diverting them to Respondent’s pay per click site.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the domain name at issue. Respondent has failed to satisfy this Panel on the balance of probabilities that he has any such rights or legitimate interests. In the circumstances Complainant is entitled to succeed in the second element of the test set out in Policy ¶ 4(a)(ii).
Respondent has clearly registered the domain name in bad faith. Respondent’s explanation that it was a mere coincidence that he chose and registered the domain name at the time of the global launch of Complainant’s BING services is not plausible.
On the balance of probabilities Respondent was well aware of Complainant’s BING launch when the domain name was registered. Complainant’s product was launched on May 28, 2008 and the domain name in dispute was registered by Respondent on May 29, 2009. In this regard the facts in the present case are remarkably similar to those in Opera Software ASA v. Mike Morgan, D2006-0752 (WIPO Oct. 30, 2006) decided by this Panelist.
Respondent’s submission that he was not aware of the nature of the services to be provided by Complainant under the BING mark is also implausible. In fact Complainant’s registrations of domain names <bing.com> on January 29, 1996, and <bingnews.com> on November 7, 2008 each pre-date Respondent’s registration of the domain name at issue.
In the view of this Panel, Respondent chose and registered this distinctive domain name in order to take predatory advantage of Complainant’s goodwill and reputation. From the beginning, Respondent’s website included links to third-party news sources (e.g., the Detroit News) and sponsored advertising that compete with Complainant’s services. Respondents arguments that Complainant is not interested in the domain name but only in the content of Respondent’s website are not correct and this is clear both from the Complaint and the inter partes correspondence relating to the dispute.
In making this finding this Panel is conscious that Respondent’s explanation for his use of a logo confusingly similar to Complainant’s BING logo, having an identical color scheme and including an orange dot is also implausible.
In the circumstances this Panel is satisfied that Respondent registered and is using the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bing-news.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: July 30, 2009
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