Microsoft Corporation v. Liu Hongjun
Claim Number: FA1002001310248
Complainant is Microsoft Corporation (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bingtravel.net> and <binghealth.net>, registered with Xin Net Technology Corporation.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2010. The Complaint was submitted in both Chinese and English. 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 submitted an “opt-in” form available on the Forum’s website.
On February 25, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <bingtravel.net> and <binghealth.net> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 March 5, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 25, 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@bingtravel.net and postmaster@binghealth.net. Also on March 5, 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 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bingtravel.net> and <binghealth.net> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingtravel.net> and <binghealth.net> domain names.
3. Respondent registered and used the <bingtravel.net> and <binghealth.net> 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 began using its official <bing.com> search engine on May 28, 2009 under its BING mark. Complainant owns the <bing.com> domain name, which Complainant uses to provide its search engine services. Complainant received worldwide news-media coverage of the launch of the BING search engine and its subsequent trademark application with the United States Patent and Trademark Office (“USPTO”). Complainant has also filed for trademark registrations with other governmental trademark authorities worldwide for its BING mark.
Respondent, Liu Hongjun, registered the <bingtravel.net> and <binghealth.net> domain names on May 29, 2009. Respondent’s disputed domain names do not resolve to active websites.
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 other
governmental trademark authorities has not yet been granted a registration with
any government agency for its BING mark.
Previous panels have determined that a federal registration is not
required under Policy ¶ 4(a)(i) so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark, and so this Panel finds. 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 further argues that it has established common law rights in its BING mark before Respondent’s registration of the disputed domain names. Complainant uses its BING mark in association with its search engine service. Complainant officially began operating the search engine on May 28, 2009 which is twenty-four hours before Respondent registered the disputed domain names. When Complainant launched the BING search engine, the launch was covered in worldwide publications both in print and online. Complainant owns the <bing.com> domain name, which it now uses for its commercial engine purposes. Complainant has continuously and extensively promoted and marketed its BING mark its related search engine. The Panel finds Complainant has established common law rights under Policy ¶ 4(a)(i) in its BING mark through continuous and extensive commercial use and media exposure that predates Respondent’s registration of the disputed domain names. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant also contends that the <bingtravel.net> and <binghealth.net> domain names are confusingly similar to its BING mark. Complainant notes that each of the disputed domain names contain Complainant’s BING mark in its entirety and simply add the generic term “travel” or “health,” while also adding the generic top level domain (“gTLD”) “.net.” The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because they contain Complainant’s mark with generic terms and the addition of the gTLD “.net.” See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that the <bingtravel.net> and <binghealth.net> domain names are confusingly similar to Complainant’s BING mark pursuant to Policy ¶ 4(a)(i).
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant submits evidence that Respondent does not have any rights or legitimate interests in the <bingtravel.net> and <binghealth.net> domain names. Complainant must prove a prima facie case in support of these allegations. After Complainant has produced its prima facie case the burden of proof shifts to Respondent to show that it has rights or interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that the Complainant has produced 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 names. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
The WHOIS information for the <bingtravel.net> and <binghealth.net> domain names list the registrant as “Liu Hongjun.” Complainant has not granted Respondent permission to use its BING mark and Complainant contends that Respondent is not commonly known by the disputed domain names. Respondent has not offered any evidence to show that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also 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 of that it is commonly known by the disputed domain name).
Complainant further contends that Respondent is not using the <bingtravel.net> and <binghealth.net> domain names as a bona fide offering or goods or services or a legitimate noncommercial or fair use because the disputed domain names are not connected to active websites. Complainant contends that Respondent’s lack of demonstrable preparations for use of the disputed domain name is evidence of its lack of rights and legitimate interests in the domain names. The Panel finds that Respondent’s failure to make an active use of the disputed domain names, absent affirmative evidence indicating otherwise, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds that in conducting a Policy ¶ 4(a)(iii) analysis it may look to the circumstances surrounding the conduct of Respondent, and that its review is not subjected exclusively to the factors listed in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Respondent registered the disputed domain names within
twenty-four hours after Complainant’s well publicized operational beginning of
its official <bing.com> search engine.
Complainant argues that Respondent’s quick registration of variations to
its BING mark indicate bad faith registration and use. The Panel finds that Respondent’s conduct
constitutes opportunistic bad faith, and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See
3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005)
(“Respondent’s registration of the disputed domain name the same day that
Complainant issued the press release regarding the acquisition constitutes
opportunistic 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”).
Complainant further submits that Respondent registered the
disputed domain names in bad faith because its failure to make an active use of
the disputed domain names is evidence of bad faith in itself. Complainant argues that Respondent’s conduct
to hold the disputed domain names without making an active use of them can be
interpreted to mean that Respondent is holding the names simply to sell them to
Complainant. The Panel finds that
Respondent’s registration and use of the disputed domain names are in bad faith
under Policy ¶ 4(a)(iii), where Respondent has failed
to connect the disputed domain names with active websites. See Pirelli & C. S.p.A. v.
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 <bingtravel.net> and <binghealth.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 12, 2010
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