national arbitration forum

 

DECISION

 

Microsoft Corporation v. wang wangyunhai

Claim Number: FA1104001386326

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is wang wangyunhai (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bingbusinessportal.us>, registered with Internet.bs Corp.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 29, 2011.  The National Arbitration Forum received a hard copy of the Complaint on May 2, 2011.

 

On April 30, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bingbusinessportal.us> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Rules”).

 

On May 3, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <bingbusinessportal.us> domain name is confusingly similar to Complainant’s BING mark.

 

2.    Respondent does not have any rights or legitimate interests in the <bingbusinessportal.us> domain name.

 

3.    Respondent registered and used the <bingbusinessportal.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corp., operates a business specializing in a wide range of computer software and web based services.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BING mark (Reg. No. 3,888,548 filed March 2, 2009; issued November 30, 2010).  The BING mark is used to support Complainant’s web based search and other information services.

 

Respondent, wang wangyunhai, registered the <bingbusinessportal.us> domain name on October 19, 2010.  The disputed domain name resolves to a website that is unrelated to Complainant’s computer business.  Respondent also offered to sell the disputed domain name to Complainant for $3,000.

 

DISCUSSION

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant alleges it has rights in the BING mark based on its registration of the marks with the USPTO (Reg. No. 3,888,548 filed March 2, 2009; issued November 30, 2010).  Registration with a federal trademark authority is sufficient to establish rights in a mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Accordingly, the Panel finds that Complainant’s trademark registration of the BING mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i), dating back to March 2, 2009.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).

 

Complainant contends Respondent’s <bingbusinessportal.us> domain name is confusingly similar to Complainant’s BING mark.  The disputed domain name incorporates all of Complainant’s mark and merely adds the generic terms “business” and “portal” to the mark.  Complainant alleges these actions are insufficient in rendering Respondent’s disputed domain name different from Complainant’s BING mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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).  Complainant also alleges the addition of the country-code top-level domain (“ccTLD”) “.us” does not significantly distinguish Respondent’s domain name from Complainant’s BING mark.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Based on the foregoing, the Panel finds Respondent’s <bingbusinessportal.us> domain name is confusingly similar to Complainant’s BING mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

Complainant has the initial burden of putting forth a prima facie showing in support of its allegation that Respondent lacks rights or legitimate interests in the disputed domain name.  Once Complainant has satisfied its burden, the burden then shifts to Respondent and Respondent must show it has rights in the domain name.  The Panel finds that Complainant has met its burden, and because Respondent failed to respond to these proceedings, the Panel may assume that it lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  However, the Panel elects to assay the record under Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.  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 [UDRP].”);  see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <bingbusinessportal.us> domain name.  Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant contends that Respondent is not commonly known by the disputed domain name and that Respondent has not received authorization to use the BING mark.  The Panel, having considered the record, can find no evidence that would support a finding that Respondent is commonly known by the disputed domain name.  Additionally, the WHOIS information lists the registrant of the disputed domain name as “wang wangyunhai,” which Complainant contends is not similar to the disputed domain name.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); 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 UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant alleges that the disputed domain name resolves Internet users to a website that is unrelated to Complainant’s business.  The Panel finds that using Complainant’s mark to divert Internet users to a website that is unrelated to Complainant 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 UDRP ¶ 4(c)(i)); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under UDRP ¶ 4(c)(i), nor does it represent a noncommercial or fair use under UDRP ¶ 4(c)(iii).”).

 

Complainant alleges that Respondent offered to sell the disputed domain name to Complainant for $3,000.  Complainant contends that the same day Respondent registered the disputed domain name, Respondent initiated contact with the Complainant that ultimately resulted in an offer to sell the disputed domain name.  The Panel finds that an offer to sell a disputed domain name is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered the disputed domain name in order to sell the domain name to Complainant.  Respondent offered to sell the <bingbusinessportal.us> domain name to Complainant for $3,000.  The Panel finds that an offer to sell the disputed domain name exhibits Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under UDRP ¶ 4(b)(i)); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).

 

Lastly, Complainant alleges that Respondent uses the disputed domain name to resolve Internet users to a website that is unrelated to Complainant’s mark.  The Panel presumes that Respondent benefits commercially from this use and therefore finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to UDRP ¶4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bingbusinessportal.us> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 1, 2011

 

 

 

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