Microsoft Corporation v. Eliran Mishal
Claim Number: FA1101001370342
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington D.C., USA. Respondent is Eliran Mishal, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com>, and <viewbing.com>, registered with Dotster, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on January 31, 2011. The complaint named Eliran Mishal as respondent.
On January 31, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com> and <viewbing.com> domain names are registered with Dotster, Inc. and that the registrants of the domain names are bound by the Dotster, Inc. 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”).
After Respondent received a copy of the Complaint Respondent changed WHOIS information to a privacy shield service using c/o and the name of each disputed domain respectively.
For the purposes of this paragraph, Respondent is Eliran Mishal and c/o VIEWBING.COM On February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2011 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@bingcinema.com, postmaster@bingcorporate.com, postmaster@bingevents.com, postmaster@bingfax.com, postmaster@bingmanager.com, postmaster@bingphonebook.com, postmaster@bingserver.com, postmaster@bingwebmail.com and postmaster@viewbing.com. Also on February 4, 2011, 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, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 (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 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 <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com> and <viewbing.com> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com> and <viewbing.com> domain names.
3. Respondent registered and used the <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com> and <viewbing.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, owns the exclusive rights to the BING mark which it uses in connection with its Internet search engine. Complainant holds numerous trademark registrations throughout the world for its BING mark, including a registration with the Austrian trademark authority (Reg. No. 239465 issued July 6, 2007).
Respondent registered all of the <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com> and <viewbing.com> domain names not earlier than June 22, 2009. Each of the disputed domain names resolve to websites featuring third-party, pay-per-click links.
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: Identity of Respondents and Determination on Cyberflight
Complainant contends that the proper respondent of this dispute is Eliran Mishal. Complainant further contends that Mishal was the original registrant of all the disputed domain names. It was only after the Respondent received a copy of the Complaint that Respondent changed the WHOIS information to a privacy shield service, using "c/o" and the name of each disputed domain respectively. Complainant contends that Respondent is engaged in what is commonly known as "cyberflying."
In Baylor University v. Domains by Proxy Inc., FA 1145651 (Nat. Arb. Forum May 26, 2008), that panel believed that Domains by Proxy was the true Respondent because it refused to lift the Privacy Shield before the Complaint was filed with the FORUM. The Panel believed that because Domains by Proxy had notified its users that it would lift the privacy shield with a proper legal notice, and refused Baylor's pre-complaint, pre-filing request, that it was therefore the registrant and Respondent of the domain name. See also Dr. Ing h.c. F Porsche AG v. Domains by Proxy, Inc. & Putinov, D2004-0311 (WIPO July 1, 2004).
To date, Forum precedent indicates that respondent's information has changed from a privacy service to a named individual or entity, such as the Baylor case, cited above. This case is unique because the Whois originally recorded the domains as all belonging to an individual, but the Whois now indicates the Whois records are privacy-protected. Accordingly this Panel finds that this is classic cyberflight, the simple transfer of a domain name to another party after a UDRP proceeding has been instituted, so that the registrant can avoid the UDRP (whether or not the "unshielding" of previously private Whois details is common practice per the registration agreements the privacy services have with their customers.) See a late switch in Whois information BOSO Fitness, LLC v. Kolombo Networks, FA1266587 (Nat Arb.Forum July 22, 2009).
The Panel finds Eliran Mishal participated in cyberflight in this case by masking the Whois after the case was filed with the Forum. The Panel directs the Forum to amend the caption of the case.
Complainant asserts that it has established rights in the BING mark. The Panel finds that trademark registration with any governmental trademark authority is sufficient to show rights in a mark, irrespective of Respondent’s country of operation. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy 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). Therefore, Complainant’s Austrian trademark registration of the BING mark (Reg. No. 239465 issued July 6, 2007) is sufficient evidence of complainant’s rights under Policy ¶ 4(a)(i).
Complainant contends Respondent’s disputed domain names are confusingly similar to Complainant’s BING mark. The disputed domain names all contain Complainant’s entire BING mark, each add generic terms and all add the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of generic terms and a gTLD do not serve to adequately distinguish a disputed domain name from a complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Accordingly, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BING mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Earlier panels have found that once a complainant makes a prima facie case in support of its allegations, the burden of proof shifts from the complainant to the respondent to prove that they have rights under Policy ¶ 4(a)(ii). Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case. Because Respondent has failed to respond to the Complaint, the Panel is allowed to infer that Respondent does not have any rights or legitimate interests in the disputed domain names. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nonetheless, the Panel chooses to examine the record to make a determination of whether or not Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has set forth no evidence, nor are there other facts in the record, to indicate that Respondent is commonly known by any of the disputed domain names. Further, Complainant asserts that Respondent has never been authorized to use the BING mark. Finding no such indication in the record, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names under 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 of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to redirect Internet users to pay-per-click websites, which are unrelated to Complainant. The Panel finds that such use is not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent attempted to auction off the disputed domain names. The Panel finds that this does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent attempted to sell the disputed domain names through auction in excess of Respondent’s out-of-pocket registration costs. The Panel finds such to be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); 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).
Complainant makes the argument that Respondent’s registration of nine domain names incorporating Complainant’s mark is evidence of a pattern of bad faith registration and use. The Panel agrees pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Respondent plays on the confusing similarity of the disputed domain names to attract Internet users who are presumably looking for official sites of Complainant. Respondent likely profits when such Internet users click through the links displayed at each of the disputed domains. The Panel finds this to constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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 Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is 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 <bingcinema.com>, <bingcorporate.com>, <bingevents.com>, <bingfax.com>, <bingmanager.com>, <bingphonebook.com>, <bingserver.com>, <bingwebmail.com>, <viewbing.com> domain names be TRANSFERRED from Respondent to Complainant,
AND it is further Ordered that forthwith the case coordinator amend the caption of this case to be:
Microsoft Corporation, v. Eliran Mishal.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 16, 2011
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