Microsoft Corporation v Harjit a/k/a Harjit Kaur
Claim Number: FA1102001373777
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Harjit a/k/a Harjit Kaur (“Respondent”), IN.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <bingtrends.com>, ,<bingrental.com>, ,<bingrentals.com>, registered with Name.com, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 18, 2011.
On Feb 21, 2011, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bingtrends.com>, ,<bingrental.com>, ,<bingrentals.com> domain name(s) is/are registered with Name.com, LLC and that Respondent is the current registrant of the names. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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 February 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@bingtrends.com, postmaster@bingrental.com, postmaster@bingrentals.com. Also on February 23, 2011, 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 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name(s) be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
TRADEMARK/SERVICE MARK INFORMATION
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Among other things, Microsoft provides consumers and businesses with online search, news, travel, shopping and other information services under the trademark BING:
Microsoft officially introduced the BING trademark to the press and public on May 28, 2009. Thereafter, prior to registration of the disputed domain name, the BING mark became famous and acquired secondary meaning through unprecedented global press coverage. See also Microsoft Corp. v. None a/k/a Prakash Prasad Timilsina, FA0906001271165 (Nat. Arb. Forum July 30, 2009)(recognizing the “global scale of the launch of the BING services” and noting “this Panel is satisfied that the word BING had acquired secondary meaning through Complainant’s use of it on May 28, 2009, the launch date of Complainant’s search engine, sufficient to establish rights to satisfy the requirements of Policy ¶4(a)(i)”); and Microsoft Corp. v. Patrick McAuliffe, FA0912001297333 (Nat. Arb. Forum December 29, 2009)(“the evidence shows that the press began speculating as to Complainant’s likely adoption of the BING trademark as early as August 1, 2008” and that by March, 2009 “Complainant’s [BING] trademark would have been known to a significant section of the public”).
Microsoft owns numerous trademark registrations for BING throughout the world, including the following:
|
Country |
Classes |
Filing date |
Registration Date |
Registration Number |
|
Colombia |
42 |
3/12/2009 |
9/22/2009 |
388,741 |
|
Colombia |
38 |
3/12/2009 |
10/26/2009 |
390,407 |
|
Colombia |
35 |
3/12/2009 |
10/26/2009 |
390,405 |
|
Costa Rica |
42 |
3/2/2009 |
8/13/2009 |
193,535 |
|
Costa Rica |
38 |
3/2/2009 |
8/3/2009 |
193,375 |
|
Costa Rica |
35 |
3/2/2009 |
7/31/2009 |
193,216 |
|
Ecuador |
38 |
3/20/2009 |
9/8/2009 |
2213-09 |
|
Ecuador |
35 |
3/20/2009 |
9/8/2009 |
2214-09 |
|
European Community |
39 |
3/2/2009 |
3/2/2009 |
IR 996,700 |
|
Guatemala |
42 |
3/10/2009 |
9/1/2009 |
165,426 |
|
Guatemala |
38 |
3/10/2009 |
8/31/2009 |
165,423 |
|
Guatemala |
35 |
3/10/2009 |
9/1/2009 |
165,427 |
|
Hong Kong |
9;35;38;41;42 |
3/2/2009 |
3/2/2009 |
301,295,695 |
|
Mexico |
39 |
3/5/2009 |
3/5/2009 |
1,127,138 |
|
Mexico |
42 |
3/5/2009 |
3/5/2009 |
1,138,359 |
|
Mexico |
41 |
3/5/2009 |
3/5/2009 |
1,117,109 |
|
Mexico |
38 |
3/5/2009 |
3/5/2009 |
1,105,140 |
|
Mexico |
35 |
3/5/2009 |
3/5/2009 |
1,105,139 |
|
Mexico |
9 |
3/5/2009 |
3/5/2009 |
1,105,138 |
|
New Zealand |
9;35;38;41;42 |
9/22/2008 |
9/22/2008 |
796,467 |
|
Panama |
35 |
3/5/2009 |
3/5/2009 |
179,519 |
|
Peru |
42 |
3/3/2009 |
6/18/2009 |
57,278 |
|
Peru |
38 |
3/3/2009 |
6/18/2009 |
57,277 |
|
Peru |
35 |
3/3/2009 |
6/18/2009 |
57,276 |
|
Taiwan |
39 |
3/2/2009 |
9/16/2009 |
1,378,808 |
|
Taiwan |
9;35;41;38 |
3/2/2009 |
10/16/2009 |
1,383,046 |
|
United States |
39 |
3/2/2009 |
11/30/2010 |
3,883,548 |
Microsoft also holds International Registration No. 996,797 and 996,700 which were filed on March 2, 2009 and designate a variety of countries, including Australia, China, the European Community, Japan, Korea, Russia, Singapore and others. Microsoft also holds numerous pending applications for BING, including United States Trademark Application No. 77/681,498 filed March 2, 2009 (Notice of Allowance issued on November 2, 2010). The filing dates for these registrations and applications predate the registration of the disputed domain names.
Microsoft also owns the domain name <bing.com> which was registered on January 29, 1996.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAMES (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s famous BING trademark.
The disputed domain names incorporates Complainant’s BING trademark in its entirety, adding only the generic terms “trends,” “rental,” and “rentals” and the generic top-level domain “.com.” These changes are not sufficient to avoid a likelihood of confusion. Nortel Networks Ltd. v. BuyMeBuyMe.com Inc., FA0604000671847 (Nat. Arb. Forum May 16, 2006). See also Microsoft Corp. v. Tameerah Worthinton, FA101101360343 (Nat. Arb. Forum January 5, 2011)(finding <answerbing.com> and <blogsbing.com> confusingly similar to BING and awarding transfer); Microsoft Corp. v. None a/k/a Prakash Prasad Timilsina, FA0906001271165 (Nat. Arb. Forum July 30, 2009)(finding <bing-news.com> confusingly similar to BING and noting that “use of the domain name must inevitably cause confusion with the Complainant’s mark on the part of Internet users”); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain names are confusingly similar to Complainant’s BING trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAMES (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s BING trademark, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Harjit a/k/a Harjit Kaur. Respondent is not commonly known by Complainant’s BING trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s BING trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domains <bingtrends.com> and <bingrentals.com> are merely placeholder pages which state “Welcome to bingtrends.com” and “Welcome to bingrental.com” respectively. There is no active content on either site. The landing page for the disputed domain <bingrental.com> displays advertisements and links to third party products and services. Presumably, Respondent receives compensation for directing consumers to third-party sites. This is 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). See Microsoft Corp. v. Tameerah Worthinton, FA101101360343(Nat. Arb. Forum January 5, 2011)(finding no legitimate interest in <answerbing.com> and <blogsbing.com> where the disputed domain names resolve to websites featuring links to third party websites); Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, Jan. 10, 2007) (finding no legitimate interest in the domain name <fossill.com> where the domain name resolved to a website featuring links to third party websites); Hewlett-Packard v. SZK.com a/k/a Michele Dinoia, FA635480 (Nat. Arb. Forum, March 7, 2006) (finding no legitimate interest where visitors were redirected to a generic search-engine website featuring links to services in competition with Complainant’s services); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); and WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
For the two disputed domain names that have no active content, it is undisputed that lack of use of a domain name does not constitute a bona fide offering of goods and services under Policy ¶4(c)(1) or a legitimate noncommercial fair use under Policy ¶4(c)(iii). See Microsoft Corporation v. Marc-Andre Turgeon, FA 1003001310905 (Nat. Arb. Forum, April 17, 2010). 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); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time that Respondent registered the disputed domain names, Complainant’s BING trademark was familiar to countless consumers worldwide through widespread use and ubiquitous press coverage. Given the fact that Respondent registered the domain names within a few days of the worldwide press regarding Complainant’s BING service, it is abundantly clear that Respondent was not only familiar with Complainant’s BING trademark at the time of registration of the domain names, but intentionally adopted domain names incorporating the BING mark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights in its well-known mark is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
One of Respondent’s sites links to third parties not affiliated with Complainant. Presumably Respondent receives revenue from these links, and this is evidence of bad faith. See Nortel Networks v. BuyMeBuyMe (deriving revenue from links to competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees’”); and Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007)(holding that respondent registered and used the domain name <fossill.com> in bad faith by diverting computer users to a website featuring links to Complainant’s competitors).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's BING trademark as to the source, sponsorship, affiliation, or endorsement of third party products and services. This constitutes bad faith under §4(b)(iv) of the Rules. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
For the two sites that have no active content, it is undisputed that failure to make active use of the disputed domain names constitutes bad faith registration and use under Policy ¶4(b)(1). See Microsoft Corporation v. Marc-Andre Turgeon, FA 1003001310905 (Nat. Arb. Forum, April 17, 2010)(finding that failure to use <bingshopping.net> for an active website constituted bad faith registration and use under the Policy); See also 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).
As noted previously, each of the disputed domain names was registered within a day or two of the worldwide announcement of Complainant’s new BING search engine. This has been found to constitute opportunistic bad faith under the Policy. See, e.g., Microsoft Corporation v. Marc-Andre Turgeon, FA 1003001310905 (Nat. Arb. Forum, April 17, 2010)(finding that registration of <bingshopping.net> within seventy-two hours of widespread press coverage constituted opportunistic bad faith under Policy ¶4(a)(iii)); See also Microsoft Corporation v. liuyang, FA1003001313233 (Nat. Arb. Forum, April 23, 2010) (finding opportunistic bad faith registration where the domain name <ruanbing> was made within days of Complainant’s announcement of its BING search engine); 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”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, began its computer business in 1975. Complainant’s BING mark was introduced in 2009 to be used in connection with its online search engine. Complainant’s mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,883,548 filed March 2, 2009 issued November 30, 2010).
Respondent, Harjit Kaur, reigstered the <bingtrends.com> and <bingrental.com> domain names on May 29, 2009 and June 3, 2009 respectively. The disputed domain names resolve to parked websites that do not contain any active content.
Respondent registered the <bingrentals.com> domain name on May 29, 2009. The disputed domain name resolves to a website featuring hyperlinks to websites that are unrelated to Complainant’s business.
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 contends it has established rights in the mark based on its registration of the mark with a federal trademark authority. Previous panels have found registration of a mark with a federal trademark authority sufficiently establishes rights in the mark. Previous panels have also found the vesting date for rights in a mark is based on the filing date of the registration. 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 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 contends Respondent’s disputed domain names are confusingly similar to the BING mark. Each of the disputed domain names incorporates Complainant’s entire mark with the mere additions of generic terms such as “rentals,” “rental,” and “trends,” as well as the affixation of the generic top-level domain (“gTLD”) “.com” to each of the domain names. The Panel finds adding generic terms and a gTLD to Complainant’s mark does not distinguish the domain names from Complainant’s mark, and pursuant to Policy ¶4(a)(i), that the disputed domain names are confusingly similar to the BING mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); 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).
The Panel finds Policy ¶4(a)(i) established.
Complainant possesses the initial burden of making a prima facie showing in support of its allegation Respondent lacks rights or legitimate interests in the disputed domain names. Once Complainant has met its burden, Respondent assumes the burden of providing evidence it has rights or legitimate interests in the disputed domain names. The Panel finds Complainant has satisfied its burden, and because Respondent failed to respond to these proceedings, the Panel assumes Respondent does lack rights or legitimate in the disputed domain names pursuant to Policy ¶4(a)(ii). See 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.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names under Policy ¶4(c).
Complainant alleges Respondent is not commonly known by any of the disputed domain names. The Panel considered the evidence contained in the record and can not find any information that would provide a solid foundation for finding Respondent is commonly known by the disputed domain name. Additionally, the WHOIS information lists the registrant of the domain names as “Harjit Kaur” which Complainant alleges is not similar to the disputed domain names. The Panel determines, based on this evidence, 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges Respondent’s <bingrentals.com> domain name resolves to a directory website displaying hyperlinks to websites that are unrelated to Complainant’s business. The Panel presumes Respondent receives click-through fees in return for maintaining a directory website with links to third-party businesses. The Panel finds such use is 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)); see also 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).”).
The <bingtrends.com> and <bingrental.com> domain names resolve to parked websites that do not contain any active content. The resolving websites are unrelated to Complainant’s business and the Panel determines Respondent’s use of these domain names does not constitute 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 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); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) established.
When examining whether the disputed domain names have been registered in bad faith, previous panels have determined that the factors listed in Policy ¶4(b) are to be illustrative only and not the sole basis for a finding of bad faith. The Panel will therefore examine the totality of the circumstances to determine whether Respondent registered and used the disputed domain names in bad faith under Policy ¶4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also 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.”).
Complainant contends Respondent’s failure to actively use the <bingtrends.com> and <bingrental.com> domain names constitutes bad faith registration and use. Previous panels have determined a failure to make active use of the disputed domain names constitutes bad faith registration and use under Policy ¶4(a)(iii). 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Therefore, the Panel finds Respondent’s failure to make an active use of the above-mentioned domain names constitutes bad faith registration and use under Policy ¶4(a)(iii).
Complainant contends Respondent is gaining commercially from the operation of the <bingrentals.com> domain name, which constitutes bad faith registration and use under Policy ¶4(b)(iv). Respondent’s disputed domain name resolves to a directory site offering links to third party businesses unrelated to Complainant. The Panel presumes Respondent collects a click through fee from the linked sites for each Internet user diverted. The Panel finds Respondent is using the disputed domain name for its own commercial gain constituting bad faith registration and use 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)).
The Panel finds Policy ¶4(a)(iii) established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingtrends.com>, <bingrental.com> and <bingrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 30, 2011
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