national arbitration forum

 

DECISION

 

Microsoft Corporation v. Abdullah Ali a/k/a UK International Trading

Claim Number: FA1201001423606

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Abdullah Ali a/k/a UK International Trading (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bingauto.us>, <bingcar.us>, and <bingcars.us>, registered with GoDaddy.com, Inc. and <binghome.us> registered with Name.com LLC.

 

PANEL

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.

 

R. Glen Ayers served as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2012.

 

On January 10, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bingauto.us>, <bingcar.us>, and <bingcars.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 “Policy”).

 

On January 10, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <binghome.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On January 10, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 30, 2012 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”).

 

A timely Response was received and determined to be complete on January 31, 2012.

 

However, the Response did not comply with ICANN Rule 5; nevertheless, the Panel has the discretion to consider the non-compliant Response and has determined that it will do so.  The Response was filed pro se, but was timely, and it is also quite brief.  Given those circumstances, failure to consider the Response would be improper.

 

On February 3, 2012, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Microsoft Corporation, the Complainant, asserts and provides proof that it holds a famous mark, BING, introduced to the public in 2009.  The mark is registered internationally.  Microsoft also owns the domain name, <bing.com>.

 

Respondent has registered four domain names:  <binghome.us>, <bingauto.us>, <bingcar.us>, and <bingcars.us>.  Microsoft asserts that its BING mark identifies a search engine designed for use by consumers to search for information, including “information relating to cars and autos . . . .”

 

Microsoft alleges that the domain names held by Respondent are identical to or confusingly similar with Complainant’s BING mark.  The addition of generic or descriptive terms and the ccTLD “.us” is not enough to avoid the confusion or similarity. 

 

Microsoft asserts that Respondent has no rights or other legitimate interests in the names.  Respondent is not known by any of the names, is not affiliated with Complainant, and is not licensed by Complainant.  While the domain names resolve to pages with links to third-party websites, which Microsoft asserts probably generate “click through” income, Microsoft asserts that such an activity is not sufficient to show a bona fide offering of goods or services or fair use. Microsoft has also shown that at least one of the web sites to which the domain names resolve advertises that the site is for sale for $2,000.

 

Bad faith is shown by the registration of these domain names over a year after the much heralded announcement of BING, which quickly became a famous and well-known mark.  Bad faith is also shown by the use of the domain names to generate click through income (which Microsoft assumes is occurring).  The links on the domain web pages also offer goods and service which compete directly with BING. 

 

B. Respondent

Respondent’s first defense is that he has never used the “Microsoft logo or content. . . . “  He asserts that Microsoft is attempting “Monopoly the use of the internet” excluding small companies. 

 

He also asserts that his domain names, by adding words – home, auto, car and cars – are completely different from BING. 

 

He also asserts that the word “bing” is a common word, including a name for babies. 

 

He asserts that Complainant should have prevented this issue from arising by buying these domain names.  He implies or perhaps even states that he would never have purchased these names if Microsoft had acted to tie up these and similar names:  “I have paid for and if these domains were not available for sale it shouldn’t be sold to me.”  He asserts that an adverse decision will destroy his investment in the names. 

 

C. Additional Submissions

 

There were no additional submissions.

 

FINDINGS

Microsoft has made a prima facie case that the domain names are confusingly similar to its mark, BING.  The addition of the words home, auto, car and cars do not change the fact of confusion. 

 

It has also made a prima facie case that the Respondent has no rights in the name; the Respondent states that he purchased the names.  He does not assert that he uses the names in any business sense and does not state whether he is even earning “click thru” income. 

 

Microsoft has also shown evidence of bad faith registration and use.  Its mark is famous and very well-known.  The registration or acquisition of these BING domain names is obviously for the purpose of either resale to Microsoft or to attract BING users searching for common consumer products and then link to web sites selling such products, all to generate click-thru income.  

 

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."

 

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 or 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 has shown that it has rights in the BING mark, which it uses in connection with offering an Internet search engine. Complainant has registrations throughout the world for the BING mark. Complainant has registered its BING mark  with the National Institute of Industrial Property (“NIIP”) in Argentina (e.g., Reg. No. 2,342,505 registered January 21, 2010). Complainant has also registered the BING mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA764,459 registered April 20, 2010). The BING mark is also registered with the Department of Trade and Industry Companies and Intellectual Property Commission (“DTICIPC”) in South America (e.g., Reg. No. 2008/26,332 registered November 10, 2008). Registration of a mark with trademark authorities gives a complainant rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i).  The establishment of rights by means of trademark registration is valid regardless of whether the parties reside in the country where the mark is registered. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP 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); 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). Therefore, the Panel finds that Complainant has rights in the BING mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <binghome.us>, <bingauto.us>, <bingcar.us>, and <bingcars.us> domain names are confusingly similar to the BING mark.  Respondent did make changes to each of the disputed domain names.  It added a generic term and the addition of the country-code top-level domain (“ccTLD”) “.us.” The addition of a generic term to a disputed domain name fails to distinguish the domain name from the mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also finds that the addition of a ccTLD is irrelevant for the purposes of a confusingly similar determination. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)).  The changes Respondent made are insufficient to make the disputed domain names distinct from the BING mark, and , therefore, the disputed domain names are confusingly similar under Policy ¶ 4(a)(i).

 

While Respondent contends that the <binghome.us>, <bingauto.us>, <bingcar.us>, and <bingcars.us> domain names are comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under UDRP ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

 

Rights or Legitimate Interests

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), as noted above.  The burden then shifted 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.”).

 

Respondent made no real attempt to assert any rights in the names.

 

Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain names lists “Abdullah Ali a/k/a UK International Trading” as the domain name registrant. Respondent is not licensed by or affiliated with Complainant and thus may not use the BING mark. Determination of whether a respondent is commonly known by a disputed domain name can be made by a panel by looking to the WHOIS records for the disputed domain name, as well as the claims the complainant makes in regard to its connection and authorization of respondent. 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 UDRP ¶ 4(c)(ii) does not apply); 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). The Panel finds under Policy ¶ 4(c)(iii) that Respondent is not commonly known by the disputed domain names.

 

Complainant continues on to argue that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant asserts that the disputed domain names resolve to websites which display third-party links to competing and noncompeting goods and services. Panels have held that the use of a disputed domain name to display third-party links, whether they be competing or noncompeting, is not a protected use. See 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 UDRP ¶¶ 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); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial use.

 

Respondent’s willingness to sell the <binghome.us> domain name is evidence of Respondent’s lack of rights and legitimate interests. At the <binghome.us> domain name, there is an offer to sell the domain for $2,000. Respondent’s willingness to sell the <binghome.us> domain name demonstrates Respondent’s lack of rights and legitimate interest in the <binghome.us> domain name 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 UDRP ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

 

 

 

Registration or Use in Bad Faith

 

Respondent’s bad faith registration and use of the <binghome.us> domain name is demonstrated by its willingness to sell the disputed domain name. Complainant has shown that the <binghome.us> domain name is offered for sale for $2,000 on its resolving website. The offering for sale of a disputed domain name often demonstrates bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith); see also 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). Therefore, it certainly appears Respondent registered (or purchased after registration) the names and is using the <binghome.us> domain name in bad faith pursuant to Policy ¶ 4(b)(i) given Respondent’s willingness to sell the disputed domain name.

 

The <binghome.us> domain name was registered on June 1,2010, the <bingauto.us> domain name was registered on June 21, 2010, and the

<bingcar.us> and <bingcars.us> domain names were registered on June 25, 2010. The disputed domain names were registered and are used in order to disrupt  the business of Complainant. Some of the links displayed on the disputed domain names compete with the services of Complainant. The Panels in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July24, 2006), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), conclude that the registration and use of a disputed domain name to display links to competitors of Complainant is evidence of bad faith because it facilitates competition and disrupts Complainant’s business. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) in order to disrupt Complainant’s business.

 

Respondent appears to have registered and uses the disputed domain names in order to commercially gain from the confusion created as to the source of the disputed domain names. The disputed domain names resolve to websites which display links to third-party websites offering goods and services both competing with and unrelated to Complainant. These links appear under headings such as “Big Fish Games,” “Download Google Chrome,” and “Advantage Rent A Car.” Certainly, confusion is created as to the source of the disputed domain names when Internet users click through the links displayed. Respondent commercially benefits from the display of these links and the Internet users who click on them. Therefore, Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) in order to take commercial advantage of the Internet users’ mistakes as to the source of the disputed domain names. 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 UDRP ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv))

 

As Microsoft has asserted, Respondent must have had constructive and/or actual notice of Complainant's rights in the BING mark prior to registration of the domain names. While constructive notice is generally regarded as insufficient to support a finding of bad faith, here the Panel must conclude that Respondent had actual notice of Complainant's mark.  It is just too famous.  Thus, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

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 <binghome.us>, <bingauto.us>, <bingcar.us>, and <bingcars.us> domain names be TRANSFERRED from Respondent to Complainant.

 

R. Glen Ayers, Panelist

Dated:  February 17, 2012

 

 

 

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