Microsoft Corporation v. Prabhjot Singh
Claim Number: FA0912001299084
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 <bingnews.org>, registered with Moniker.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 16, 2009.
On December 15, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <bingnews.org> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2010 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@bingnews.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant manufactures and
markets computer software related products and services.
Complainant offered a new
search engine under its BING mark on May 28, 2009.
From the date of its launch, Complainant
has continuously and extensively promoted its BING mark and the new search
engine.
Complainant owns the
<bing.com> and <bingphotos.com> domain names, through which
Complainant provides its search engine services.
Complainant has received
global press coverage of the launch of the BING search engine and its
subsequent trademark registration application with the United States Patent and
Trademark Office (“USPTO”).
Complainant has established common law rights in the BING
mark which predate Respondent’s registration of the disputed domain name.
Respondent registered the <bingnews.org>
domain name on July 30, 2009.
The disputed domain name resolves to a website featuring click-through links to third-party products and services, including third-party news sources.
Respondent’s <bingnews.org> domain name is confusingly similar to Complainant’s BING mark.
Respondent is not commonly
known by the BING mark and is not affiliated with Complainant in any way.
Respondent is not licensed to use the BING mark, and Respondent is not an authorized vendor, supplier or discounter of Complainant’s goods and services.
Respondent does not have any rights to or legitimate interests in the <bingnews.org> domain name.
Respondent registered and uses the <bingnews.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 the Policy,
so long as a Complainant can establish common law rights in a mark through
proof of sufficient secondary meaning associated with it. See, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Policy does not require that a complainant's trademark
or service mark be registered by a government authority 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).
On the facts before us, there is no dispute as to complainant’s allegation that Complainant uses the BING mark in association with Complainant’s new search engine service, which began operating in May of 2009, and that, when Complainant launched the BING search engine, the launch was covered in worldwide publications. There is likewise no dispute as to Complainant’s assertion to the effect that Complainant owns the <bing.com> and <bingphotos.com> domain names, which Complainant uses to support its search engine services, or that Complainant has continuously and extensively promoted its BING mark and new search engine. Complainant has thus 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 a complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which both made the mark distinctive and generated “significant goodwill”); see also Artistic Pursuit LLC v. calcuttaweb-developers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that a complainant established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before a respondent registered its disputed domain name).
Complainant asserts that Respondent’s <bingnews.org> domain name is confusingly
similar to Complainant’s BING trademark within the meaning of Policy ¶ 4(a)(i). Respondent’s domain name is indeed confusingly
similar to the mark because the domain name incorporates the entirety of
Complainant’s mark and merely adds the generic term “news” and the generic
top-level domain (“gTLD”) “.org.” The
addition of the generic term “news” does not avoid a finding of confusing
similarity between the domain and Complainant’s mark. See Arthur Guinness Son & Co. (
Similarly, the addition of a gTLD to a registered mark is irrelevant in distinguishing a disputed domain name and a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or
legitimate interests in the disputed domain name. Once Complainant makes out a
prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it nonetheless has
rights to or legitimate interests in the disputed domain name. See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a
“complainant must first make a prima facie case that [the] respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make a prima facie case that a respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights or
legitimate interests in a domain name).
Complainant has established a prima facie case in support of its contentions, and Respondent, for
its part, has failed to submit a Response to these proceedings. We are
therefore free to conclude that Respondent has no rights or interests which are
cognizable under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that a complainant’s allegations are true unless
clearly contradicted by the evidence). Nevertheless, we will
examine the record before us to determine if there is in it any basis for
concluding that Respondent has rights to or legitimate interests in the
disputed domain name by application of the tests set out in Policy ¶ 4(c).
We begin by noting that the pertinent WHOIS information lists the registrant only as “Prabhjot Singh.” Moreover, Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the BING mark, that Respondent is not affiliated with Complainant in any way, and that Respondent is not licensed to use the BING mark, nor is Respondent an authorized vendor, supplier or discounter of Complainant’s goods and services. We are thus constrained to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the relevant WHOIS information and a complainant’s assertion that it did not authorize or license that respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also observe that there is no dispute as to Complainant’s
allegation that Respondent’s domain name resolves to a website featuring click-through links to
third-party products and services, including third-party news sources. In the circumstances presented, we may safely
presume that Respondent receives click-through fees for each visit to the
subject website by Internet users. Respondent’s use of the disputed domain name,
as alleged, is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp
plc et al. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying links to third-party websites was not 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), where a
respondent presumably earned “click-through” fees for each consumer it
redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was
not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use by redirecting Internet users to a commercial search
engine website with links to websites that may be of interest to a
complainant’s customers, presumably earning “click-through fees” in the
process).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the disputed domain name to link Internet users to websites featuring third-party links and profit through the receipt of click-through fees, thus creating a strong likelihood of confusion with Complainant’s BING trademark, is evidence of bad faith pursuant registration and use of the contested domain name under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain where that respondent likely profited from this diversion scheme); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
In addition, it appears that Respondent registered the <bingnews.org> domain name with at least constructive knowledge of
Complainant’s rights in the BING trademark by virtue of Complainant’s prior filing for
registration of that mark with the United States Patent and Trademark Office
and the extensive worldwide publicity surrounding the launch of the BING
product. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bingnews.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 2, 2010
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