Microsoft Corporation v. Rodney Mayers c/o REM Holdings also known as ClubREM
Claim Number: FA1012001362921
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Rodney Mayers c/o REM Holdings a/k/a ClubREM (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com>, registered with Dotster, inc.
The domain names at issue are <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net>, registered with 1&1 internet ag.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2010; the National Arbitration Forum received payment on December 10, 2010.
On December 13, 2010, Dotster, inc. confirmed by e-mail to the National Arbitration Forum that the <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com domain names are registered with Dotster, inc. and that Respondent is the current registrant of the names. Dotster, inc. has verified that Respondent is bound by the Dotster, inc. registration agreement and has thereby agreed to resolve domain disputeds brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 14, 2010, 1&1 internet ag confirmed by e-mail to the National Arbitration Forum that the <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> domain names are registered with 1&1 internet ag and that Respondent is the current registrant of the names. 1&1 internet ag has verified that Respondent is bound by the 1&1 internet ag registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2011 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@clubmsn.info, postmaster@clubmsn.org, postmaster@microsoftphilanthropy.com, postmaster@microsoftphilanthropy.info, postmaster@microsoftphilanthropy.net, postmaster@microsoftsuggests.biz, postmaster@microsoftsuggests.com, postmaster@microsoftsuggests.info, postmaster@microsoftsuggests.net, postmaster@bingeauction.com, postmaster@bingebet.com, postmaster@bingebets.com, postmaster@bingebuyer.com, postmaster@bingebuyers.com, postmaster@bingebuying.com, postmaster@bingebuys.com, postmaster@bingedrugs.com, postmaster@bingepoker.com, postmaster@bingereader.com, postmaster@bingesale.com, postmaster@bingesales.com, postmaster@bingeseller.com, postmaster@bingesellers.com, postmaster@bingesex.com, postmaster@bingeshopper.com, postmaster@bingetrade.com, and postmaster@bingexxx.com. Also on December 15, 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 January 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
<clubmsn.info> and <clubmsn.org> are confusingly similar
to Complainant’s MSN mark.
Respondent’s <microsoftphilanthropy.com>, <microsoftphilanthropy.info>,
<microsoftphilanthropy.net>, <microsoftsuggests.biz>,
<microsoftsuggests.com>, <microsoftsuggests.info>,
and <microsoftsuggests.net> domain names are confusingly similar
to Complainant’s MICROSOFT mark.
Respondent’s <bingeauction.com>, <bingebet.com>, <bingebets.com>,
<bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>,
<bingebuys.com>, <bingedrugs.com>, <bingepoker.com>,
<bingereader.com>, <bingesale.com>, <bingesales.com>,
<bingeseller.com>, <bingesellers.com>, <bingesex.com>,
<bingeshopper.com>, <bingetrade.com>, and <bingexxx.com>
domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, <microsoftsuggests.net>, <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names.
3. Respondent registered and used the <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, <microsoftsuggests.net>, <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, provides software, services, and solutions for individuals and businesses. Complainant holds numerous trademark registrations with the United States Patent and Trademark office (“USPTO”) for the MICROSOFT mark (e.g., Reg. No. 1,685,083 issued May 5, 1992). Complainant also holds numerous trademark registrations with the USPTO for the MSN mark (e.g., Reg. No. 2,600,020 issued July 30, 2002). Complainant uses the MSN mark in connection with an Internet search engine as well as news, e-mail, instant messaging, and other online services. In addition, Complainant holds trademark registrations with the USPTO for the BING mark (e.g., Reg. No. 3,883,548 filed March 2, 2009; issued November 30, 2010). Complainant uses the BING mark in connection with its online search engine, news, travel, shopping, and other information services.
Respondent registered the disputed domain names on the following dates: <clubmsn.info> and <clubmsn.org> on May 15, 2010; <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> on July 5, 2010; <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, and <microsoftphilanthropy.net> on July 11, 2010; <bingebuyer.com>, <bingebuyers.com>, and <bingebuying.com> on October 20, 2010; <bingebuys.com> on October 22, 2010; <bingedrugs.com>, <bingepoker.com>, <bingebet.com>, <bingebets.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> on October 23, 2010; <bingeauction.com> and <bingereader.com> on October 24, 2010.
Respondent’s <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> domain names resolve to inactive websites. Respondent’s <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names resolve to websites that display advertisements for third-party products and provide links to third-party 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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that, although Respondent uses several aliases, a single person owns and uses the disputed domain names. Complainant asserts that Respondents share the same physical address. In addition, Complainant argues that “Rodney Mayers” is the administrative contact for REM Holdings and ClubREM and that the e-mail contact for REM Holdings has the domain ClubREM.com. Finally, Complainant contends Rodney Mayers acknowledged in an e-mail communication that it has the ability to transfer selected domain names held by ClubREM and REM Holdings.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus choose to proceed with the instant proceedings.
Complainant claims rights in the MICROSOFT mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,685,083 issued May 5, 1992). Complainant also claims rights in the MSN mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,600,020 issued July 30, 2002). In addition, Complainant claims rights in the BING mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,883,548 filed March 2, 2009; issued November 30, 2010). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the MICROSOFT, MSN, and BING marks pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel also finds that Complainant’s rights in the BING mark date back to its filing date of the trademark application with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant avers Respondent’s <clubmsn.info>
and <clubmsn.org> domain names are confusingly similar to its MSN
mark. Complainant argues that Respondent replicates its mark in the disputed
domain names and then simply adds the generic term “club” to its MSN mark.
Respondent also affixes the generic top-level domain (“gTLD”) “.info” to
Complainant’s mark in the <clubmsn.info> domain name and the gTLD
“.org” to Complainant’s mark in the <clubmsn.org> domain name.
The Panel finds that adding a generic term and gTLD to a mark does not
sufficiently distinguish a domain name from the mark. See 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7,
2004) (finding the respondent’s <amextravel.com> domain name confusingly
similar to Complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)); see also 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).
Therefore, the Panel concludes Respondent’s <clubmsn.info> and <clubmsn.org>
domain names are confusingly similar to Complainant’s MSN mark under Policy ¶
4(a)(i).
Complainant also alleges that Respondent’s <microsoftphilanthropy.com>,
<microsoftphilanthropy.info>, <microsoftphilanthropy.net>,
<microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>,
and <microsoftsuggests.net> domain names are confusingly similar
to its MICROSOFT mark. Respondent fully incorporates the MICROSOFT mark in the
disputed domain names and then merely adds the generic term “philanthropy” or
“suggests” to the mark in the domain names. In addition, Respondent attaches
either the gTLD “.com,” “.info,” “.net,” or “.biz” to Complainant’s mark in the
disputed domain names. The Panel finds that these additions do not negate a
finding of confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Am. Express Co. v. MustNeed.com,
supra; see also Trip Network Inc. v. Alviera, supra.
Thus, the Panel finds that Respondent’s <microsoftphilanthropy.com>,
<microsoftphilanthropy.info>, <microsoftphilanthropy.net>,
<microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>,
and <microsoftsuggests.net> domain names are confusingly similar
to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
Finally, Complainant contends Respondent’s <bingeauction.com>, <bingebet.com>,
<bingebets.com>, <bingebuyer.com>, <bingebuyers.com>,
<bingebuying.com>, <bingebuys.com>, <bingedrugs.com>,
<bingepoker.com>, <bingereader.com>, <bingesale.com>,
<bingesales.com>, <bingeseller.com>, <bingesellers.com>,
<bingesex.com>, <bingeshopper.com>, <bingetrade.com>,
and <bingexxx.com> domain names are confusingly similar to its
BING mark. Complainant argues that these disputed domain names fully
incorporate its BING mark and then merely add the Internet-related prefix “e”
(an abbreviation for the word “electronic”) and then add one of the following
generic terms: “auction,” “bet,” “buy” (and variation), “drugs”, “poker,”
“reader,” “sale” (and variations), “sex,” “shopper,” “trade,” or “xxx.”
Complainant also claims the addition of the gTLD “.com” to its mark in the
disputed domain names is irrelevant for Policy ¶ 4(a)(i) purposes. The Panel
finds that Respondent’s domain names are not sufficiently distinct from
Complainant’s BING mark. See Google, Inc. v. DktBot.org, FA 286993
(Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).”); see also Canadian Tire Corp. v. 849075 Alberta
Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names
<ecanadiantire.com> and <e-canadiantire.com> are confusingly
similar to Canadian Tire’s trademarks); see also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, supra; 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 that Respondent’s <bingeauction.com>,
<bingebet.com>, <bingebets.com>, <bingebuyer.com>,
<bingebuyers.com>, <bingebuying.com>, <bingebuys.com>,
<bingedrugs.com>, <bingepoker.com>, <bingereader.com>,
<bingesale.com>, <bingesales.com>, <bingeseller.com>,
<bingesellers.com>, <bingesex.com>, <bingeshopper.com>,
<bingetrade.com>, and <bingexxx.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 must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 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.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts Respondent is not affiliated with it in any way nor has it given Respondent permission to use its MICROSOFT, MSN, or BING marks. Moreover, the WHOIS registrant information does not indicate that Respondent is commonly known by the disputed domain names. Without evidence to the contrary, the Panel finds that Complainant’s assertions and the WHOIS registrant information support a finding that Respondent is not commonly known by the disputed domain names 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges the <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names resolve to websites that display advertisements for third-party products and provide links to third-party websites. Screen shots of the resolving websites show pages that contain hyperlinks with titles like “Multi Line Slots,” “Online Share Trading,” “Adult Sites,” “Online Casinos,” “Auctions,” “People Search,” “Work at Home Moms,” “Printable Coupons,” “Bargain Books,” “New York City Apartments,” and “Compulsive Behavior.” The Panel presumes that Respondent profits from its use of the disputed domain names through the receipt of advertisement and click-through fees. Therefore, the Panel finds that Respondent does not use the disputed domain names to make 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 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant also alleges that Respondent’s <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> domain names resolve to inactive websites. Complainant submits screen shots of the resolving websites. These images show sites that contain the message “Error 404 – Not found. The document you requested is not found.” Based on the evidence in the record, the Panel finds that Respondent has failed to make active use of the disputed domain names. Therefore, the Panel finds that Respondent does not use the <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> domain names to make 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 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).
Furthermore, Complainant asserts the <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names resolve to websites that feature a headline that reads “This Site is for Sale.” In addition, Complainant submits a letter from Respondent to Complainant in which Respondent offers to sell the disputed domain names to Complainant. The Panel finds that Respondent’s offer to sell the disputed domain names to the general public as well as Respondent’s offer to sell the disputed domain names to Complainant provide additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See 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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s offers to sell the <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names to the general public and Complainant likely exceed its out-of-pocket costs. Therefore, the Panel finds that Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
As previously discussed, Respondent presumably profits from its use of the <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names through the receipt of advertisement and click-through fees. Additionally, these disputed domain names are confusingly similar to Complainant’s BING mark. As a result, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BING mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel finds that this behavior amounts to registration and use in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Prior panels have found that failure to make active use of a domain name that is confusingly similar to another’s mark can qualify as registration and use in bad faith when the domain name registration occurred after the complainant acquired rights in the mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). Respondent’s <clubmsn.info> and <clubmsn.org> domain names are confusingly similar to Complainant’s MSN mark. Respondent registered these domain names on May 15, 2010, approximately eight years after Complainant registered the MSN mark with the USPTO (e.g., Reg. No. 2,600,020 issued July 30, 2002). Similarly, Respondent’s <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, and <microsoftsuggests.net> domain names are confusingly similar to Complainant’s MICROSOFT mark. Again, Respondent registered these domain names many years after Complainant registered the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,685,083 issued May 5, 1992). Therefore, the Panel finds that Respondent registered the confusingly similar domain names after Complainant acquired rights in the MSN and MICROSOFT marks. Consequently, the Panel finds that Respondent’s failure to make active use of the disputed domain names constitutes registration and use in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubmsn.info>, <clubmsn.org>, <microsoftphilanthropy.com>, <microsoftphilanthropy.info>, <microsoftphilanthropy.net>, <microsoftsuggests.biz>, <microsoftsuggests.com>, <microsoftsuggests.info>, <microsoftsuggests.net>, <bingeauction.com>, <bingebet.com>, <bingebets.com>, <bingebuyer.com>, <bingebuyers.com>, <bingebuying.com>, <bingebuys.com>, <bingedrugs.com>, <bingepoker.com>, <bingereader.com>, <bingesale.com>, <bingesales.com>, <bingeseller.com>, <bingesellers.com>, <bingesex.com>, <bingeshopper.com>, <bingetrade.com>, and <bingexxx.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 19, 2011
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