Microsoft Corporation v. liuyang
Claim Number: FA1003001313233
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 <ruanbing.com>, registered with Xiamen Ename Network Technology Corporation Limite.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2010. The Complaint was submitted in both the Chinese and English languages.
On March 18, 2010, Xiamen Ename Network Technology Corporation Limite confirmed by e-mail to the National Arbitration Forum that the <ruanbing.com> domain name is registered with Xiamen Ename Network Technology Corporation Limite and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limite has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limite 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 23, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 12, 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@ruanbing.com. Also on March 23, 2010, the Chinese language 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 April 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ruanbing.com> domain name is confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <ruanbing.com> domain name.
3. Respondent registered and used the <ruanbing.com> domain name 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 began using 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, liuyang, registered the <ruanbing.com> domain name on May 29, 2009. Respondent’s disputed domain name previously resolved website that imitated Complainant’s official <bing.com> website. Respondent’s disputed domain name currently resolves to a website that displays third-party links to the goods and services of Complainant’s competitors.
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 a trademark registration 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.
Previous panels have determined that a federal trademark registration is
not required if the Complainant can establish common law rights through proof
of sufficient secondary meaning associated with the mark. Therefore, the Panel finds that registration
with a government trademark authority is not required to establish rights in a
mark under Policy ¶ 4(a)(i). 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 argues that it has established common law rights in its BING mark that predate Respondent’s registration of the <ruanbing.com> domain name. 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 one day before Respondent registered the disputed domain name. 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 in the fall of 2008. The day of the launch of Complainant’s official <bing.com> domain name media coverage was highly active and coverage could be seen worldwide. 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 marketing and 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 <ruanbing.com> domain name is confusingly similar to its
BING mark because it simply adds the generic term “ruan” and the generic
top-level domain (“gTLD”) “.com.”
Complainant has submitted evidence that the term “ruan” is a Chinese
string instrument, and a Chinese surname.
The Panel finds that Respondent’s <ruanbing.com>
domain name is confusingly similar to Complainant’s BING mark under Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisified.
Complainant maintains that Respondent does not have any rights or legitimate interests in the <ruanbing.com> domain name. 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 name. 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 name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <ruanbing.com> domain name 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 asserts that it has not granted Respondent permission to use its BING mark, and that Respondent is not commonly known as the <ruanbing.com> domain name. The WHOIS information identifies “liuyang” as the registrant of the <ruanbing.com> domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain under 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 asserts that Respondent’s current use of the <ruanbing.com> domain name to redirect Internet users to the products and services of Complainant’s online competitors is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant contends that Respondent receives financial compensation for the above described use. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to the competitors of Complainant does not amount to 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 Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent 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 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the
confusingly similar disputed domain name to redirect Internet users seeking
Complainant’s products and services to the services of Complainant’s
competitors is evidence of bad faith registration and use. The Panel finds that Respondent’s use of the <ruanbing.com> domain name to divert
Internet users seeking Complainant’s products to Complainant’s competitors is
evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see
also
Complainant further argues that Respondent’s use of the
disputed domain name to advertise the goods and services of Complainant’s
online search engine competitors, presumably for financial gain, is further
evidence of bad faith registration and use.
The Panel finds that Respondent’s use of the disputed domain name to attract
Internet users to is website that advertises and displays the goods and
services of Complainant’s competitors, which it presumably receives financial
compensation for is further evidence of bad faith registration and use under
Policy ¶ 4(b)(iv).
Respondent registered the disputed domain name one day 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”).
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 <ruanbing.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 23, 2010
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