Microsoft Corporation v. Jason Harrington
Claim Number: FA1001001305319
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina
Rosette, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bıng.com>, registered with Dynadot, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On January 28, 2010, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the PUNYCODE equivalent of the <bıng.com> domain name, [<xn--bng-jua.com>], is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2010 by which Respondent could file a response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bıng.com. Also on February 1, 2010, 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 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bıng.com> domain name is confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bıng.com> domain name.
3. Respondent registered and used the <bıng.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a well-known provider of computer software and related products. Complainant has used the BING mark in connection with its search engine services since May 28, 2009 and the BING mark received media coverage beginning on August 1, 2008. Various media outlets, including The Washington Post, PC World, The New York Times, The Wall Street Journal and others throughout the world, published stories regarding Complainant’s trademark registration filing for BING with the USPTO, its efforts to rebrand its search engine with BING being a likely possibility, and further developments as Complainant’s use of BING progressed.
Respondent, Jason Harrington, registered the <bıng.com> domain name on May 27, 2009. The <bıng.com> domain name is an internationalized domain name (“IDN”) with the PUNYCODE translation of [<xn--bng-jua.com>]. The disputed domain name initially resolved to a website featuring third-party links, but now the disputed domain name does not resolve to an active website.
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.
Preliminary Issue: Internationalized Domain Name
The disputed domain name <bıng.com> is an internationalized domain name (“IDN”) with the PUNYCODE
translation of [<xn--bng-jua.com>]. An IDN is a domain name that contains
non-traditional characters, such as letters with diacritics or non-Latin
characters. In order to display such
characters or symbols in a domain name, the terms of the domain name are
encoded into a scheme such as PUNYCODE. For
Respondent to display the “I” properly in the <bıng.com>
domain name, it first had to encode it into the [<xn--bng-jua.com>]
domain name.
In the past, panels have founds IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its Punycode translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> Punycode translation should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the <bıng.com> domain name is one and the same with its PUNYCODE translation, [<xn--bng-jua.com>], for purposes of this proceeding.
Policy ¶ 4(a)(i) does not require
that Complainant hold trademark registrations for the BING mark, provided that
it can establish common law rights in the mark through a sufficient showing of
secondary meaning of the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its
rights in the mark under Policy ¶ 4(a)(i)); see
also Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant asserts rights in the BING mark based on its continuous use and expenditure of funds to develop and promote secondary meaning for the BING mark. Complainant has continuously used the BING mark in connection with search engine services, with media coverage of the mark’s use beginning on August 1, 2008, well before Respondent’s registration of the disputed domain name on May 27, 2009. Complainant has submitted evidence that it has multiple applications for trademark registrations pending with various governmental trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (Application No. 77,681,498 filed March 2, 2009). The Panel finds that Complainant’s evidence of continuous use and promotion of the mark establishes Complainant’s common law rights in the BING mark through a showing of secondary meaning in the BING mark pursuant to Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s disputed domain name <bıng.com> is confusingly similar to Complainant’s BING mark. The disputed domain exchanges an “ı,” which is the non-ASCII, Latin Extended A character 0131, for the standard ASCII character “i” and adds the generic top-level domain (“gTLD”) “.com” in an effort to differentiate the disputed domain name and Complainant’s mark. The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The addition of the gTLD “.com” is irrelevant in a Policy ¶ 4(a)(i) analysis and thus does not differentiate the disputed domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BING mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(c), Complainant must only present a prima facie case before the burden then shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in these proceedings. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. 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.”); see also Talk City, Inc. v. Robertson, D2009-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the disputed domain name, concluding that Respondent accordingly lacks rights and legitimate interests. The Panel finds that the WHOIS information for the disputed domain name lists the registrant as “Jason Harrington,” which is evidence that Respondent is not commonly known by the disputed domain name. The WHOIS information, combined with the lack of any further evidence showing that Respondent is commonly known by the disputed domain name, is sufficient to conclude that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); 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 Policy ¶ 4(c)(i) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name initially diverted
Internet users to a website displaying third-party links, which presumably
benefited Respondent through “click-through” fees. The Panel finds that operating a website
displaying generic links for commercial profit fails to qualify as 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 Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb.
Forum Mar. 5, 2003) (holding that the respondent’s use of the
<hpcanada.com> domain name to post links to commercial websites and
subject Internet users to pop-up advertisements was not a bona fide offering
of goods or services or a legitimate noncommercial or fair use of the domain
name); see also Summit
Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006)
(finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark
to redirect Internet users to respondent’s own website for commercial gain does
not constitute either 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)).
Currently, the disputed domain name does not direct Internet
users to an active webpage. The Panel finds
that failing to make active use of a disputed domain name is likewise not a bona fide offering of goods or services
or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i)
or 4(c)(iii). See George
Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had
no rights or legitimate interests in a domain name under either Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the
domain name); see also U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum
Apr. 9, 2007) (“Respondent’s failure to
associate content with its disputed domain name evinces a lack of rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶
4(a)(ii) has been satisifed.
Respondent’s disputed domain name initially redirected to a site featuring generic links. Respondent’s first use of the disputed domain name to redirect Internet users to such a site disrupts Complainant’s business because Internet users may be confused as to Complainant’s affiliation with the site and become potential customers lost for Complainant. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to an unrelated site demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was either to disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent used the confusingly similar disputed domain name
initially in order to attract Internet users to Respondent’s website for
commercial gain. When the Internet users
arrived at Respondent’s webpage, any subsequent click on a link listed there
presumably would have resulted in financial profit to Respondent through “pay
per click” fees. The Panel finds Respondent’s
prior efforts to mislead people seeking Complainant and attract Complainant’s
business for Respondent’s own financial benefit establish bad faith
registration and use under Policy ¶ 4(b)(iv).
Currently, Respondent’s disputed domain name resolves to a page that is not in active use. The Panel finds that failure to make active use of a disputed domain is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <bıng.com> [<xn--bng-jua.com>] domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum