Microsoft Corporation v.
Doug Goodman
Claim Number: FA0911001294422
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina
Rosette of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingadblock.com>, <bingadblocks.com>,
<bingadcash.com>, <bingadmoney.com>, <bingadspace.com>, <bingadzone.com>, <bingblock.com>, <bingblogging.com>, <bingclicks.com>, <bingdiscounts.com>, <binggps.com>, <bingindexing.com>, <binglisting.com>, <bingnetworking.com>, <bingquicksearch.com>, <bingrobot.com>, <bingsitebuilder.com>, <bingtutorial.com>, <bingtutorials.com>, <bingvideoclips.com>, and <bingwire.com>, registered
with Godaddy.com,
Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically November 13, 2009; the
National Arbitration Forum received a hard copy of the Complaint November 16, 2009.
On November 13, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bingadblock.com>, <bingadblocks.com>,
<bingadcash.com>, <bingadmoney.com>, <bingadspace.com>, <bingadzone.com>, <bingblock.com>, <bingblogging.com>, <bingclicks.com>, <bingdiscounts.com>, <binggps.com>, <bingindexing.com>, <binglisting.com>, <bingnetworking.com>, <bingquicksearch.com>, <bingrobot.com>, <bingsitebuilder.com>, <bingtutorial.com>, <bingtutorials.com>, <bingvideoclips.com>, and <bingwire.com> domain names
are registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 17, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 7, 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 postmaster@bingadblock.com, postmaster@bingadblocks.com, postmaster@bingadcash.com, postmaster@bingadmoney.com, postmaster@bingadspace.com, postmaster@bingadzone.com, postmaster@bingblock.com, postmaster@bingblogging.com, postmaster@bingclicks.com, postmaster@bingdiscounts.com, postmaster@binggps.com, postmaster@bingindexing.com, postmaster@binglisting.com,
postmaster@bingnetworking.com, postmaster@bingquicksearch.com, postmaster@bingrobot.com, postmaster@bingsitebuilder.com, postmaster@bingtutorial.com, postmaster@bingtutorials.com, postmaster@bingvideoclips.com, postmaster@bingwire.com by e-mail.
A timely Response was received and determined to be complete December 8, 2009.
A timely Complainant’s Additional Submission was filed and determined
to be complete and submitted to the Panel for consideration pursuant to UDRP
Supplemental Rule 7(a).
On December 10, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent registered the disputed domain
names and included Complainant’s BING mark in each. As a result each of the domain names is
confusingly similar to the Complainant’s protected mark.
2. Respondent has no rights to or legitimate
interests in the disputed domain names.
3. Respondent registered and used the domain
names in order to sell them to Complainant and such intent established bad
faith registration and use.
B. Respondent makes the following points in
response.
1. Respondent “created of formulated” the
disputed domain names that had been missed by “Microsoft webmasters” until
Respondent offered them to Complainant.
2. The disputed domain names would bring value
to the Complainant and the Complainant should pay for them.
3. Respondent concedes that each of the names
has BING in them and that BING is a pending mark
4. The domain names were not registered in bad
faith because Respondent had no intent to harm BING, Inc.
5. Respondent does not use the disputed domain
names to divert users from BING, Inc.
6. Because of the value the disputed names will
bring to Complainant, the case should be viewed as a case of reverse name
highjacking
C. Complainant makes the following points in its
Additional Submission.
1. Respondent conceded that Complainant
satisfied each of the three elements required under UDRP 4(1)(a).
2. Respondent conceded he intended to sell the
names to Complainant when he registered them.
3. Respondent offered the names for sale to
Complainant.
4. Respondent conceded that he registered the
names and purposely included Complainant’s protected BING mark in an effort to
attract Complainant’s interest in them.
FINDINGS
Pursuant to ICANN Policy ¶ 4(a)(i), Complainant
established common law rights in the BING mark by showing continuous use and
the expenditure of development funds to promote and gain secondary meaning for
its BING mark.
Complainant has used the BING mark in connection with search engine services since May 28, 2008, and had global coverage of its search engine bearing the BING mark.
Complainant also has numerous applications for trademark registration pending with various governmental trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (Application No. 77/681,498 filed March 2, 2009.
A previous panel also has found
that Complainant established common law rights in the BING mark. See Microsoft Corporation v. None a/k/a Prakash Prasad Timilsina, FA 1271165 (Nat. Arb.
Forum July 30, 2009).
The disputed domain names each contain Complainant’s BING mark and each
adds a generic term or terms along with the generic top-level domain (“gTLD”)
“.com.”
Each of the disputed domain names is confusingly similar to
Complainant’s BING mark.
Respondent admitted that its primary intention in
registering the disputed names was to sell them to Complainant.
The Whois Report shows that the disputed domain names were registered
during a three-day period beginning June 24, 2009 and ending June 26, 2009.
Respondent’s communications appear to show that Respondent was aware of
Complainants interests in the BING mark prior to registering the group of names
at issue here.
Confusing similarity is established.
Respondent’s lack of rights in the BING mark
is established.
Respondent’s bad faith registration and use
is established.
DISCUSSION
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 Complainant to 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) 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.
Complainant need not hold a registration of the BING mark in order to establish rights in that mark under Policy ¶ 4(a)(i) provided that it can establish common law rights in the mark through a sufficient showing of secondary meaning in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts that it has continuously used the BING mark in connection with search engine services since May 28, 2008, a year before Respondent registered these disputed domain names. Complainant further asserts that there was widespread global coverage of Complainant’s debut of its search engine bearing the BING mark on May 28, 2008.
Complainant also submitted evidence
that it has numerous applications for trademark registration pending with
various governmental trademark authorities throughout the world, including the
United States Patent and Trademark Office (“USPTO”) (Application No. 77/681,498
filed March 2, 2009. Complainant points
out that a previous panel has found that Complainant has established common law
rights in the BING mark. See Microsoft
Corporation v. None a/k/a Prakash Prasad
Timilsina,
FA 1271165 (Nat. Arb. Forum July 30, 2009) (“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 Panel finds that Complainant’s evidence establishes
that Complainant has common law rights in its BING mark by showing secondary
meaning in the BING mark under Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat.
Arb. Forum Dec. 19, 2005) (finding that the complainant established common law
rights in the STELLAR CALL CENTRES mark because the complainant demonstrated
that its mark had acquired secondary meaning); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that the complainant could establish common law rights
in its GW BAKERIES mark through consistent and continuous use of the mark,
which helped the mark become distinctive and generate “significant goodwill”).
Each of the disputed domain names contains Complainant’s BING mark and each adds a generic term or terms along with the generic top-level domain (“gTLD”) “.com.” Complainant contends that the disputed domain names are confusingly similar to Complainant’s BING mark. The Panel agrees. The disputed domain names are confusingly similar to Complainant’s BING mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Respondent makes no allegations, pursuant to Policy ¶ 4(a)(i) and concedes that he intentionally put the BING mark in each of the disputed domain names while being aware of Complaints rights to and interests in the BING mark.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that it has rights to and legitimate interests in a mark and that Respondent lacks such rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once Complainant makes a prima facie case, the burden of proof then shifts to Respondent to show that it does have such rights to or legitimate interests in the domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that
Respondent is not commonly known by any of the disputed domain names. The WHOIS information for each of the
disputed domain names lists “Doug Goodman” as the registrant. Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant contends that the <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>, and <bingrobot.com> domain names each resolves to similar a website that displays hyperlinks to third-party websites, some of which directly compete with Complainant. Such circumstances permit the Panel to presume that Respondent receives click-through fees for these hyperlinks, thus profiting thereby. The Panel finds that Respondent’s use of the <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>, and <bingrobot.com> domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant contends that the <bingadblock.com>, <bingadblocks.com>,
<bingadcash.com>, <bingadmoney.com>, <bingadspace.com>, <bingadzone.com>, <bingclicks.com>, <bingdiscounts.com>, <binggps.com>, <bingindexing.com>, <binglisting.com>, <bingnetworking.com>, <bingsitebuilder.com>, <bingtutorial.com>, <bingtutorials.com>, <bingvideoclips.com>, and <bingwire.com> domain names each resolves
to Complainant’s website at <bing.com>.
Complainant further contends that Respondent’s redirection of these
disputed domain names is not an active use.
Respondent has admitted that its primary intention in registering these
names was to sell them to Complainant. Therefore,
the Panel finds that Respondent’s offer to sell these disputed domain names is
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Kinko’s Inc. v.
eToll, Inc.,
FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name where it
appeared that the domain name was registered for ultimate use by the
complainant); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)); see also
Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain
name to a complainant who owns a trademark with which the domain name is
confusingly similar for an amount in excess of out-of-pocket costs has been
held to demonstrate a lack of legitimate rights or interests.”).
The
Panel has found that Complainant established a prima facie case in
support of its arguments that Respondent lacks rights and legitimate interests
under Policy ¶ 4(a)(ii). See Terminal
Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name). The Panel further finds that Respondent
has not shown rights to or legitimate interests in the disputed domain
names. Notwithstanding that Respondent contends
that it is in the business of identifying domain names for other businesses and
selling the identified domain names to them, the Panel finds that Respondent has
not shown rights to or legitimate interests in this disputed group of domain
names that seek to profit from use of Complainant’s mark.
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Complainant contends that
Respondent attempted to sell the disputed domain names for more than Respondent’s
out-of-pocket costs of registration and that this supports findings of bad
faith registration and use. The Panel
agrees and finds that Respondent’s offer to sell the disputed domain names
constitutes bad faith registration and use under Policy ¶ 4(b)(i). See
Complainant
further asserts that the <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>,
and <bingrobot.com> domain
names each resolves to similar websites that feature hyperlinks to third-party
websites, some of which directly compete with Complainant. The Panel agrees and finds that Respondent’s
actions constitute bad faith registration and use under Policy ¶
4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v.
Complainant argues that Respondent
receives click-through fees for the hyperlinks displayed on the websites
resolving from the <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>,
and <bingrobot.com> domain
names. Under the evidence here, the Panel
is permitted to find that Respondent’s use of these disputed domain names
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶
4(a)(iii).
Reverse Domain Name Hijacking
Respondent
contends that Complainant has engaged in reverse domain name hijacking. The Panel disagrees. Complainant satisfied all of the elements of
Policy ¶ 4(a), and has not engaged in reverse domain name hijacking. See
World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements
of the Policy, Respondent’s allegation of reverse domain name hijacking must
fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec.
2, 2003) (finding no reverse domain name hijacking where complainant prevailed
on the “identical/confusingly similar” prong of the Policy).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingadblock.com>, <bingadblocks.com>,
<bingadcash.com>, <bingadmoney.com>, <bingadspace.com>, <bingadzone.com>, <bingblock.com>, <bingblogging.com>, <bingclicks.com>, <bingdiscounts.com>, <binggps.com>, <bingindexing.com>, <binglisting.com>, <bingnetworking.com>, <bingquicksearch.com>, <bingrobot.com>, <bingsitebuilder.com>, <bingtutorial.com>, <bingtutorials.com>, <bingvideoclips.com>, and <bingwire.com> domain names
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 31, 2009.
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum