Microsoft Corporation v. Adam Jordan Associates
Claim Number: FA1102001375214
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington D.C., USA. Respondent is Adam Jordan Associates (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoft-bing.com>, <search-bing.com>, and <google-bing.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 28, 2011; the National Arbitration Forum received payment February 28, 2011.
On March 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoft-bing.com>, <search-bing.com>, and <google-bing.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@microsoft-bing.com, postmaster@search-bing.com, and postmaster@google-bing.com. Also on March 4, 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <microsoft-bing.com>, <search-bing.com>, and <google-bing.com>, are confusingly similar to Complainant’s BING mark.
2. Respondent has no rights to or legitimate interests in the <microsoft-bing.com>, <search-bing.com>, and <google-bing.com> domain names.
3. Respondent registered and used the <microsoft-bing.com>, <search-bing.com>, and <google-bing.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, holds multiple trademark registrations around the world for its protected MICROSOFT and BING marks, including with the World Intellectual Property Organization (“WIPO”) (Reg. No. 1,293,662 issued March 2, 2009). Complainant uses the BING mark in connection with its search and decision making engine, located at <bing.com>, and its provision of a website and website links to geographic information, map images, and trip routing.
Respondent, Adam Jordan Associates, registered the disputed domain names May 28, 2009, the day that Complainant launched its BING services. The <microsoft-bing.com> and <search-bing.com> domain names resolve to websites displaying pay-per-click links to third-party advertisements and the <search-bing.com> domain name also displays advertisements for some of Complainant’s own products and services. The <google-bing.com> domain name resolves to a website displaying third-party links for products and services related to Internet, email, and domain name hosting.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in its BING mark by virtue of its registration of the mark with WIPO, a trademark authority (Reg. No. 1,293,662 issued March 2, 2009). The Panel finds that evidence of a valid trademark registration is sufficient to establish Complainant’s rights in the BING mark for purposes of a Policy ¶ 4(a)(i) analysis. See 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)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant urges that the disputed domain names are confusingly similar to Complainant’s BING mark. Each of the disputed domain names contains Complainant’s entire BING mark coupled with either a competitor’s mark (“google”) or a descriptive term (“search” or “microsoft”). The Panel finds that the addition of a word falling into either of these two categories does not sufficiently distinguish the disputed domain names from Complainant’s mark. See G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim.”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Additionally, the disputed domain names each add a hyphen and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these additions also fail to properly distinguish the disputed domain names from Complainant’s BING mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <microsoft-bing.com>, <search-bing.com>, and <google-bing.com> domain names are confusingly similar to Complainant’s BING mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant met its initial burden under Policy ¶ 4(a)(ii) by establishing a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. Based on Complainant’s prima facie case, the burden of proof shifts to Respondent to prove that it does have such rights to or legitimate interests in the disputed domain names by submitting evidence in support. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Respondent’s failure to submit any sort of response to these proceedings allows the Panel to infer that Respondent does in fact lack rights and legitimate interests in the disputed domain names because Respondent provided no evidence to the contrary. 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.”).
In the interest of fairness, however, the Panel still examines the record in light of the factors outlined in Policy ¶ 4(c) in order to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant alleges that it has not authorized or licensed Respondent to use its BING mark in connection with its business or as a part of the disputed domain names. Additionally, Complainant urges that no evidence suggests that Respondent is commonly known by the disputed domain name. The WHOIS information indicates that the disputed domain names are registered to “Adam Jordan Associates,” which Complainant contends is evidence that Respondent does not have rights to or a legitimate interest in the disputed domain names. Respondent has not provided any evidence that would allow the Panel to conclude differently. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names and that Respondent therefore lacks rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts as well that Respondent is using the disputed domain names to resolve to websites that feature advertising links to third-parties as well as links to Complainant’s own products and services. Complainant submits screenshots from the resolving websites in support of its assertion. Complainant contends that using the disputed domain names to resolve to websites with pay-per-click advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the disputed domain names to display pay-per-click links and advertisements to Complainant’s products, as well as those of third parties is clearly an attempt to capitalize on the goodwill associated with Complainant’s BING mark. The Panel agrees and finds that Respondent’s likely attempt to profit from Internet users’ confusion as to Complainant’s suggested affiliation with Respondent’s disputed domain names and the resolving websites is evidence of bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <microsoft-bing.com>, <search-bing.com>, and <google-bing.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 11, 2011.
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