Microsoft Corporation v. Zhang Hua
Claim Number: FA1002001310241
Complainant is Microsoft Corporation (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bingimages.net> and <bingvideos.net>, registered with Xin Net Technology Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2010. The Complaint was submitted in both Chinese and English. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 25, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <bingimages.net> and <bingvideos.net> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 March 5, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 25, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bingimages.net and postmaster@bingvideos.net. Also on March 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bingimages.net> and <bingvideos.net> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingimages.net> and <bingvideos.net> domain names.
3. Respondent registered and used the <bingimages.net> and <bingvideos.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets, and sells computer software, hardware and related products and services. Complainant implemented the <bing.com> search engine on May 28, 2009 under its BING mark. Complainant owns the <bing.com> domain name, which Complainant uses to provide its search engine services. Complainant received worldwide press coverage of the launch of the BING search engine and subsequent trademark registration application with the United States Patent and Trademark Office (“USPTO”), as well as with other governmental trademark authorities worldwide.
Respondent registered the <bingimages.net> and <bingvideos.net> domain names on May 30, 2009. Respondent’s disputed domain names do not resolve to active websites.
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”), as well as other
governmental trademark authorities but has not yet been granted a registration
with any government agency for its BING mark.
However, the Panel finds that 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 further argues that it has established common law rights in its BING mark before Respondent’s registration of the disputed domain names. Complainant uses its BING mark in association with its search engine service. Complainant officially began operating the search engine on May 28, 2009 which is three days before Respondent registered the disputed domain names. When Complainant launched the BING search engine, the launch was covered in worldwide publications both in print and online. The media attention that surrounded the launch of Complainant’s new search engine was extensive with coverage beginning well over a year before the official launch date. The media coverage of the launch was also highly active the day of the launch and in the following days, which includes the day that Respondent registered the disputed domain names. Complainant owns the <bing.com> domain name, which Complainant uses to provide its search engine services. Complainant has continuously and extensively promoted its BING mark and new search engine. The Panel finds 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 Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant alleges that the <bingimages.net> and <bingvideos.net> domain names are
confusingly similar to its BING mark because each disputed domain name contains
the BING mark in its entirety and simply adds the generic term “images” or
“videos,” in addition to the generic top level domain (“gTLD”) “.net.” The Panel finds that Respondent’s disputed
domain names are confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant declares that Respondent does not have any rights or legitimate interests in the <bingimages.net> and <bingvideos.net> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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 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.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent is not commonly known by the disputed domain names, and Complainant has not granted Respondent permission to use its BING mark. The WHOIS information lists the domain names registrant as “Zhang Hua,” and Respondent has not offered any evidence that it is known as the disputed domain names. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further alleges that Respondent is not using the
<bingimages.net> and <bingvideos.net>
domain names in connection with a bona
fide offering or goods or services or noncommercial or fair use because the
disputed domain names do not resolve to active websites. Complainant contends that this lack of use is
not a demonstration of preparation to make an active use of the disputed domain
names. The Panel finds that Respondent’s
failure to make an active use of the disputed domain names is not a use in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use
under Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Apr. 12, 2007) (finding that the respondent lacked rights or legitimate
interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the respondent had no rights or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed
to make any active use of the domain name).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Respondent registered the disputed domain names two days
after Complainant began operating its search engine that had a widely
publicized build up and release date.
The Panel finds that this conduct constitutes opportunistic bad faith,
and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Tech. Props., Inc. v. Hussain,
FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took
advantage of the public announcement that Tandy Corporation was changing its
name to RadioShack by registering the domain names on the same day as a public
announcement of a company’s name change.
This is also evidence of bad faith.”); see also Sota v. Waldron,
D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of
the <seveballesterostrophy.com> domain name at the time of the
announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates
an opportunistic registration”).
Complainant also contends that Respondent registered the disputed domain names in bad faith because Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith in itself. The Panel finds that Respondent’s registration of the disputed domain names were made in bad faith under Policy ¶ 4(a)(iii), because it subsequently failed to make an active use of the domain names. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingimages.net> and <bingvideos.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 13, 2010
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