Microsoft Corporation v. TN Chen
Claim Number: FA0911001296240
Complainant is Microsoft
Corporation (“Complainant”), represented by Kristina Rosette, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bing-wallpaper.com> and <bingimg.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.
On November 25, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bing-wallpaper.com> and <bingimg.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@bing-wallpaper.com and postmaster@bingimg.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bing-wallpaper.com> and <bingimg.com> domain names.
3. Respondent registered and used the <bing-wallpaper.com> and <bingimg.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets, and sells computer software and related products and services. Complainant began to offer a search engine on May 28, 2009 under its BING mark. Complainant has continuously and extensively promoted its BING mark and new search engine. Complainant owns the <bing.com> and <bingphotos.com> domain names, which Complainant uses to provide its search engine services. Complainant received global press coverage of the launch of the BING search engine and subsequent trademark registration application with the United States Patent and Trademark Office (“USPTO”).
Respondent, TN Chen, registered the <bing-wallpaper.com> and <bingimg.com> domain names no earlier than June 30, 2009. The disputed domain names resolve to a website that offers software to download a wallpaper image of Complainant’s BING mark and contains hyperlinks relating to competing search engine services. Respondent also requests donations from Internet users.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 has filed for trademark registrations with the
United States Patent and Trademark Office (“USPTO”) and other trademark
authorities, but Complainant does not yet hold a trademark registration for its
BING mark. However, governmental
trademark registration is not necessary to establish rights under Policy ¶
4(a)(i). Previous panels have determined
that a federal registration is not required so long as the Complainant can
establish common law rights through proof of sufficient secondary meaning
associated with the mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also 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).
Complainant uses the BING mark in association with Complainant’s new search engine service. Complainant officially began operating the search engine in May of 2009. When Complainant launched the BING search engine, the launch was covered in worldwide publications by newspapers, such as the New York Times and LA Times. Complainant owns the <bing.com> and <bingphotos.com> domain names, which Complainant uses to provide its search engine services. Complainant has continuously and extensively promoted its BING mark and new search engine. Complainant has established common law rights in the BING mark through continuous and extensive commercial use predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See 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”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant alleges Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names are confusingly similar to Complainant’s BING mark. The disputed domain names both contain Complainant’s mark and add the generic top-level domain “gTLD” “.com.” The <bing-wallpaper.com> domain name also adds a hyphen and the generic term “wallpaper.” The <bingimg.com> domain name further adds the abbreviation “img,” which stands for image. The Panel finds the addition of a hyphen, generic term, letters, and a gTLD fail to adequately distinguish the disputed domain names from Complainant’s mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names are confusingly similar to Complainant’s BING mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <bing-wallpaper.com> and <bingimg.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).
Respondent has offered no evidence, and there is no evidence on the record, suggesting that Respondent is commonly known by the <bing-wallpaper.com> and <bingimg.com> domain names. Complainant asserts that Respondent has never been authorized or licensed to use the BING mark. The WHOIS information identifies Respondent as “TN Chen.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <bing-wallpaper.com> and <bingimg.com> domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the <bing-wallpaper.com> and <bingimg.com> domain names to resolve to a website offering downloadable software that allows Internet users to download a wallpaper image of Complainant’s BING mark and contains hyperlinks to competing search engine services. Respondent also requests donations from Internet users. The Panel finds these uses of the disputed domain names are not bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit 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 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names resolve to a website containing hyperlinks to search engine providers that compete with Complainant. Internet users may use a competing search engine instead of Complainant’s new search engine because of Respondent’s competing use of the confusingly similar disputed domain names. Therefore, the Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s search engine business, which constitutes 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. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The disputed domain names contain the aforementioned
hyperlinks and also offer wallpaper downloads of Complainant’s BING mark. Respondent profits from this use by requesting
donations from Internet users and also likely receives click-through fees from
the competing hyperlinks. Internet users
interested in Complainant’s search engine may become confused as to
Complainant’s sponsorship and affiliation with the disputed domain names and
resolving website. The Panel finds
Respondent’s use of the disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
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-wallpaper.com><bingimg.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 13, 2010
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