Microsoft Corporation v. Wei Wang
Claim Number: FA2007001906456
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Wei Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bingwallpaperhd.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2020; the Forum received payment on July 29, 2020.
On July 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bingwallpaperhd.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2020 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@bingwallpaperhd.com. Also on July 31, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 disputed domain name <bingwallpaperhd.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BING trademark and service mark established through its ownership of its portfolio of registrations described below, and the goodwill that it has established in the mark by extensive use in connection with the provision of online search, news, travel, shopping and other information services since June 1, 2009.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s famous, registered BING trademark, arguing that the disputed domain name incorporates the BING mark in its entirety, adding only the generic or descriptive terms “wallpaper” and “hd” (which stands for “high definition”) followed by the most common generic Top Level Domain (gTLD) extension <.com>.
Complainant submits that the elements “wallpaper” and “hd” and the gTLD extension are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s famous BING trademark. See Microsoft Corporation v. Pengcheng Zhang FA 1819611 (Forum Jan. 3, 2019) (finding <bingwallpaper.com> confusingly similar to the BING trademark); and Microsoft Corporation v. TN Chen FA 1296240 (Forum Jan. 13, 2010) (finding <bing-wallpaper.com> confusingly similar to the BING trademark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that while Respondent’s identity is redacted on the public WhoIs for the disputed domain name, Respondent’s name as disclosed by the Registrar in the course of this proceeding, shows that Respondent is not commonly known by Complainant’s BING mark.
Complainant further submits that Respondent is not affiliated with Complainant in any way, adding that Respondent is not licensed by Complainant to use Complainant’s BING mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (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).
Complainant also submits that the disputed domain name is not used in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. In this regard Complainant refers to screenshots of the website to which the disputed domain name resolves and the third party websites to which it links and argues that they show that Respondent is using the disputed domain name in connection with a site that shows images of various BING wallpaper photos that have been used at <bing.com> in the past.
Complainant adds that the links to various unrelated third-party websites that are presented on Respondent’s website indicate that presumably Respondent receives click through revenues from these advertisements.
Complainant also argues that Respondent’s use of the BING trademark and imagery may initially suggest to an unsuspecting Internet user that the site is associated with Complainant when it is not. Additionally Respondent’s use of the disputed domain name to attract consumers to unrelated products and services, presumably to benefit from pay-per-click revenue, 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 of the domain name pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Pengcheng Zhang FA 1819611 (Forum Jan. 3, 2019) (finding the use of <bingwallpaper.com> which contained advertising to unrelated products and services was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that at the time that Respondent registered the disputed domain name, Complainant’s BING trademark was already famous and familiar to countless consumers worldwide and therefore it is clear that Respondent was not only familiar with Complainant’s BING trademark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating Complainant’s trademark in order to create an association with Complainant and its BING products and services. For many years Complainant has offered an application that allows users to download Complainant’s wallpaper images to their desktops, using the designation “Bing Wallpaper.”
Complainant submits that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Skype v. Caruso, FA 1431445 (Forum May 4, 2012) (“…it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the [SKYPE] mark… Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶ 4(a)(iii)”).
Furthermore, Complainant submits that by using the BING trademark to promote unrelated businesses, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Microsoft Corporation v. Pengcheng Zhang FA 1819611 (Forum Jan. 3, 2019) (finding the use of <bingwallpaper.com> to redirect users to unrelated third party sites established Respondent’s bad faith under Policy ¶ 4(b)(iv)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the BING trademark BING in connection with the provision of online search, news, travel, shopping and other information services and is the owner of a very large portfolio of trademark and service mark registrations in countries across the world for the BING mark including the following:
· United States registered service mark BING, registration number 3,883,548, registered on the Principal Register on November 30, 2010 for services in international class 39; and
· United States registered trademark and service mark BING, registration number 3,975,040, registered on the Principal Register on June 7, 2011 for goods and services in international classes, 9, 35, 38, 41 and 42.
Complainant is also the owner of the <bing.com> domain name which it uses to deliver its services.
The disputed domain name was registered on June 5, 2018 and resolves to a website that purports to offer computer screen display wallpaper downloads to Internet visitors and which features advertising links to third-party websites.
There is no information available about Complainant, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to request by the Forum for details of the registration of the disputed domain name in the course of this Complaint. The information provided by the Registrar disclosed Respondent’s name and contact details which is redacted on the publicly available WhoIs.
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 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence that it has rights in the BING trademark and service mark established through its ownership of its portfolio of registrations described above, and the goodwill that it has established in the mark by extensive use in connection with the provision of online search, news, travel, shopping and other information services on Complainant’s website to which its <bing.com> resolves since June 1, 2009.
The disputed domain name incorporates Complainant’s BING mark in its entirety, adding only the generic or descriptive terms “wallpaper” and “hd” generic Top-Level Domain (TLD) extension <.com>.
Complainant’s BING trademark is the initial, dominant and only distinctive element of the disputed domain name.
The terms “wallpaper” and “hd” are generic (“hd” probably standing for “high definition” in context) and add no distinguishing character to the disputed domain name. The gTLD <.com> extension is typically disregarded under the first element confusing similarity test, as it a standard requirement for registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the BING trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Referring to the annexes to the Complaint which include screenshots of the website to which the disputed domain name resolves and to the third-party websites to which it hosts links, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing
· that Respondent is not commonly known by Complainant’s BING mark;
· that while Respondent’s identity is redacted on the public WhoIs, it was disclosed by the Registrar in the course of this proceeding which Complainant submits shows that Respondent is not commonly known by Complainant’s BING mark;
· that Respondent is not affiliated with Complainant in any way;
· that Respondent is not licensed by Complainant to use Complainant’s BING mark;
· that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· that Respondent’s website contains links to various other third-party sites that are not related to Complainant or its BING trademark;
· that presumably Respondent receives click-through revenues from these links;
· that Respondent’s use of the BING trademark and imagery may initially suggest to an unsuspecting computer user that the site is associated with Complainant when it is not;
· that Respondent is seeking to attract traffic and revenue using Complainant’s famous BING trademark; and
· that therefore the disputed domain name is not used in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on June 5, 2018 and resolves to a website that purports to offer computer screen display wallpaper downloads to Internet visitors and which features advertising links to third party websites.
Because Complainant’s distinctive BING mark is the initial, dominant and only distinctive element of the disputed domain name in combination with the word “wallpaper” and the acronym “hd” illustrates that it is improbable that the registrant was unaware of Complainant, its BING trademark and the services that it provides when the disputed domain name was chosen and registered.
Complainant asserts that for many years, it has offered an application that allows users to download wallpaper images to their desktop, using the designation “BING Wallpaper.” Considering the evidence adduced, this Panel finds that on the balance of probabilities the disputed domain name was intentionally chosen and registered in bad faith in order to misleadingly create an association with Complainant and its BING products and services.
Complainant has adduced in evidence screenshots of the website to which the disputed domain name resolves and third party websites to which it posts links, which show that Respondent is using the BING trademark to divert and attract Internet users to its website which hosts advertising links to third-party businesses and from which it is probable that Respondent is benefitting commercially from pay-per-click revenue.
Additionally, Respondent’s website purports to offer images which have previously been offered by Complainant as computer screen wallpaper.
This Panel must finder therefore that the disputed domain name is being used in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingwallpaperhd.com> domain name be TRANSFERRED from Respondent to Complainant
_________________________________
James Bridgeman SC
Panelist
Dated: August 25, 2020
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