Microsoft Corporation v. John Bachini
Claim Number: FA1110001411046
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is John Bachini (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bing.travel>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2011; the National Arbitration Forum received payment on October 12, 2011.
On October 12, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <bing.travel> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. 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 October 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@bing.travel. Also on October 13, 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.
A timely Response was received and determined to be complete on October 21, 2011.
Complainant submitted an Additional Submission on October 25, 2011 in compliance with Supplemental Rule 7.
On October 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Respondent submitted an Additional Submission on November 1, 2011 that was not submitted in compliance with Supplemental Rule 7, and will not be considered.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. The subject domain name, <bing.travel> is identical or confusingly similar to Complainant’s BING trademark.
2. Respondent has no rights or legitimate interests in the <bing.travel> domain name.
3. The <bing.travel> domain name was registered and has been used in bad faith.
B. Respondent
1. Respondent denies each of Complainant’s three assertions; claiming a long term involvement in the travel business, which bears no relation to the search engine business.
C. Additional Submission from Complainant
1. The addition of the top level domain “.travel” does not distinguish <bing.travel> from Complainant’s BING mark.
2. BING travel has been a large part of the BING search engine business from prior to registration of the subject domain name.
3. Respondent claimed the Registration preceded Microsoft’s announcement of the BING search engine. Complainant disagreed, citing a more authoritative source as to date of registration.
The Panel finds that Complainant has established all three elements of the UDRP and that the <bing.travel> domain name should be transferred to Complainant.
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."
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 its Complaint and Additional Submission, Complainant contends that it is has rights in the BING mark pursuant to Policy ¶ 4(a)(i). Panels have found, in such cases as Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), and Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), that the registration of a mark with a federal trademark authority is sufficient to establish rights in that mark. In addition, panels have found that the relevant rights of a mark registered with the United State Patent and Trademark Office (“USPTO”) is the filing date. This is evidenced by panels’ decision in Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), and Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) in which the filing date of USPTO registration was treated as the date of acquisition of rights pursuant to Policy ¶ 4(a)(i). Complainant argues that it has several registrations for the BING mark (e.g., Reg. No. 3,883,548 filed March 2, 2009; registered November 30, 2010) with the USPTO. Additionally, Complainant states that it has registered the BING mark (Reg. No. 996,700 registered February 3, 2009) through the European Union’s Office for Harmonization in the Internal Market (“OHIM”), which incorporates the United Kingdom, the country in which Respondent operates. The Panel finds that the registration of the BING mark with the USPTO and OHIM is sufficient, and finds that Complainant has rights in the BING mark pursuant to Policy ¶ 4(a)(i).
Complainant contends also that the <bing.travel> domain name is identical to Complainant’s BING mark. Complainant argues that Respondent has fully-incorporated the BING mark in the domain name and merely added the sponsored top-level domain (“sTLD”) “.travel.” The Panel finds that the addition of the sTLD “.travel” to Complainant’s BING mark irrelevant, and finds that this change alone renders the <bing.travel> domain name identical to Complainant’s BING mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain; see also Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (‘.com’ or ‘.net’)”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Panels have found that a complainant’s allegations, coupled with information derived from the WHOIS record for a disputed domain name, can guide the panel in its determination of whether a respondent is commonly known by a disputed domain name. See 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); 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 contends that Respondent is not licensed by Complainant to use the BING mark nor is Respondent affiliated with Complainant in any way. In its Additional Submission, Complainant notes that, although Respondent claims that “BING” is an acronym for its company name, Respondent gives no concrete evidence of time of development of its company or ever having used the domain name in its course of business. Complainant provides an annex demonstrating that the WHOIS record lists “John Bachini” as the domain name registrant. Given this information, the Panel finds that Respondent is not commonly known by the <bing.travel> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <bing.travel> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant claims it provides a variety of online services including travel services under its BING mark. Complainant argues that it has provided travel-related services prior to, and directly with, the BING mark and that the media attention given to the use of the BING mark to travel-related services has been extensive. The Panel finds that Respondent uses the <bing.travel> domain name to display links to third-party websites offering online travel services. Panels consistently hold that the display of third-party links that compete with the complainant demonstrates a respondent’s lack of rights and legitimate interests in the disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (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). If the Panel finds that Respondent has not made a Policy ¶ 4(a)(i) bona fide offering of goods or services or a Policy ¶ 4(a)(i) legitimate noncommercial or fair use out of the <bing.travel> domain name, the Panel may find that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent has made a general offer to sell the disputed domain name to Complainant. The Panel finds that such a general offer is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
In its Complaint and Additional Submission, Complainant argues that Respondent’s offer to sell the <bing.travel> domain name is evidence of Respondent’s bad faith. Panels have found in the past that an offer to sell, regardless of whether an amount is specified, demonstrates bad faith registration and use on the part of the respondent. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Complainant claims, and attaches supporting evidence, that after contacting Respondent about the infringing nature of the <bing.travel> domain name and requesting the transfer of the domain name, that Respondent stated its willingness to sell the domain name, but not transfer it without compensation. The Panel finds that Respondent’s offer to sell the <bing.travel> domain name is indicative of bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent registered and used the disputed domain name in order to divert Internet users from Complainant and thus to disrupt Complainant’s business. The <bing.travel> domain name allegedly resolves to a website which displays links to Complainant’s competitors in the travel industry. Panels, in cases such as Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), have found that the display of links to competitors of the complainant is a disruptive use of a disputed domain name. The Panel finds that Respondent’s use of the <bing.travel> domain name was disruptive to Complainant, and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s bad faith registration and use of the <bing.travel> domain name is also evident under a Policy ¶ 4(b)(iv) analysis. According to Complainant, the <bing.travel> domain name is identical to Complainant’s mark and resolves to a website displaying competing links. Complainant argues that Respondent is attempting to commercially benefit from the confusion that these qualities invoke in Internet users’ minds. The Panel finds that Respondent is trying to benefit commercially by taking advantage of Internet users’ confusion, and finds that Respondent registered and uses the <bing.travel> domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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.’”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bing.travel> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 9, 2011
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