Microsoft Corporation v. Yaoxin Liu
Claim Number: FA1002001307254
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR
The domain names at issue are <bingcamera.com>, <bingfinancing.com>, <directorybing.com>, <drugstorebing.com>, <girlsbing.com>, <marketingbing.com>, and <mediabing.com>, registered with Name.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on
On
On February
12, 2010, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of March 4, 2010 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@bingcamera.com,
postmaster@bingfinancing.com, postmaster@directorybing.com,
postmaster@drugstorebing.com, postmaster@girlsbing.com, postmaster@marketingbing.com,
and postmaster@mediabing.com.
Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.[1]
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bingcamera.com>, <bingfinancing.com>, <directorybing.com>, <drugstorebing.com>, <girlsbing.com>, <marketingbing.com>, and <mediabing.com> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingcamera.com>, <bingfinancing.com>, <directorybing.com>, <drugstorebing.com>, <girlsbing.com>, <marketingbing.com>, and <mediabing.com> domain names.
3. Respondent registered and used the <bingcamera.com>, <bingfinancing.com>, <directorybing.com>, <drugstorebing.com>, <girlsbing.com>, <marketingbing.com>, and <mediabing.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets,
and sells computer software, hardware and related products and services. Complainant implemented the <bing.com>
search engine on
Respondent, Yaoxin Liu, registered the <bingcamera.com>, <bingfinancing.com>,
<directorybing.com>, <drugstorebing.com>, <girlsbing.com>,
<marketingbing.com>, and <mediabing.com> domain
names on
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.
Complainant has filed for trademark registrations with the
United States Patent and Trademark Office (“USPTO”), as well as international
filings but does not yet own a registration with any government agency for its
BING mark. However, governmental
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels
have determined that a federal registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
See 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 uses its BING mark in association with its
search engine service. Complainant officially began operating the search engine
on
Complainant alleges Respondent’s <bingcamera.com>, <bingfinancing.com>,
<directorybing.com>, <drugstorebing.com>, <girlsbing.com>,
<marketingbing.com>, and <mediabing.com> domain
names are confusingly similar to Complainant’s BING mark. The disputed domain names contain
Complainant’s mark in its entirety and add the terms “camera,” “financing,”
“directory,” “drugstore,” “girls,” “marketing,” and “media,” and add the
generic top-level domain (“gTLD”) “.com.”
The Panel finds the additions of generic words and the gTLD “.com” to
Complainant’s BING mark are not sufficient to
distinguish the disputed domain names from Complainant’s mark. Therefore, the Panel finds Respondent’s
disputed domain names are confusingly similar to Complainant’s BING mark
pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son &
Co. (
Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s BING mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant declares that Respondent does not have any
rights or legitimate interests in the <bingcamera.com>, <bingfinancing.com>,
<directorybing.com>, <drugstorebing.com>, <girlsbing.com>,
<marketingbing.com>, and <mediabing.com> domain
names. Complainant is required to make a
prima facie case in support of these
allegations. Once Complainant has
produced a prima facie case the
burden of proof shifts to Respondent to show why they have rights or interests
in the disputed domain name. See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also 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
Policy.”). The Panel finds that the
Complainant has established a prima facie
case. Due to the Respondent’s failure to
respond to these proceedings, the Panel may assume Respondent does not have any
rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See American Express Co. v. Fang
Suhendro, FA 129120 (Nat.
Arb. Forum
Complainant contends that Respondent is not commonly known
by the disputed domain names, and Complainant has not granted Respondent
permission to use its BING mark. The
WHOIS information lists Respondent as “Yaoxin Liu,” and Respondent has not
offered any evidence that it is known as the disputed domain names. The Panel finds that Respondent does not have
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s disputed domain names resolve to websites that offer similar search services as Complainant’s official <bing.com> domain name. It is presumed that Respondent is collecting click-through fees for the links and search terms displayed on its website. Complainant contends that Respondent’s use of the disputed domain names to gain commercially is evidence of lack of rights and legitimate interests in the disputed domain names. The Panel finds that Respondent’s disputed domain names are not connected with 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see alsoRoyal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the confusingly similar disputed domain names in order to intentionally attract Internet users to its websites by creating a strong likelihood of confusion with Complainant’s BING mark in an attempt to profit is evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Access Res. Servs., Inc. v. Individual, FA 97750 (Nat. Arb. Forum Aug. 13, 2001) (“Respondent's registration and use of the <misscleosucks.com> domain name to promote competing psychic services, assumedly for commercial gain, by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Respondent registered the disputed domain names three days
after Complainant began operating its search engine that had a widely
publicized build up and release date.
The Panel finds that this conduct constitutes opportunistic bad faith,
and is further evidence of bad faith registration and use pursuant to Policy ¶
4(b). See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The
Respondent took advantage of the public announcement that Tandy Corporation was
changing its name to RadioShack by registering the domain names on the same day
as a public announcement of a company’s name change. This is also evidence of bad faith.”); see also
Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that
the respondent’s registration of the <seveballesterostrophy.com> domain
name at the time of the announcement of the Seve Ballesteros Trophy golf
tournament “strongly indicates an opportunistic registration”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <bingcamera.com>, <bingfinancing.com>, <directorybing.com>, <drugstorebing.com>, <girlsbing.com>, <marketingbing.com>, and <mediabing.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 25, 2010
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National Arbitration Forum
[1] Respondent has submitted Other Correspondence via e-mail on February 18, 2010. This correspondence was determined not to be a Response as it was not submitted in accordance with applicable Rules. Nevertheless, the Panel has reviewed the correspondence and determined that nothing therein would change the outcome of this Decision.