Microsoft Corporation v. Chiou Ji-an aka none / Qiu Ji-an
Claim Number: FA1309001521025
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Chiou Ji-an aka none / Qiu Ji-an (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com>, registered with ENOM, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2013; the National Arbitration Forum received payment on September 24, 2013.
On September 24, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, 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”).
On September 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2013 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@bing119.com, postmaster@bing1314.com, postmaster@bing168.com, postmaster@bing911.com, postmaster@bingaudio.com, postmaster@bingbaidu.com, postmaster@bingbio.com, postmaster@bingbrazil.com, postmaster@bingegypt.com, postmaster@bingface.com, postmaster@bingfrance.com, postmaster@bingspain.com, and postmaster@bingvision.com. Also on September 24, 2013, 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.
A timely Response was received and determined to be complete on September 25, 2013.
On September 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
First of all Complainant contends that all of the domain name registrants have similar names, all share the same e-mail address (gian5185@gmail.com), all are located in the same general address (Zhubei City, Hsinchu County, Taiwan), all registrants use the same registrar, and all the domain names share that apparently false administrative contact information (Google, Inc.)
Complainant uses the BING mark in connection with the offering of online searches, and information services related to travel, shopping, and other commercial interest. Complainant offers its services in various countries around the world. Complainant has registered the BING mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,883,548 filed March 2, 2009; registered November 30, 2010).
Respondent registered all of these domain names that are confusingly similar to the BING mark. All of the domain names include the generic top-level domain (“gTLD”) “.com.” Generic terms such as “audio,” “bio,” “face,” or “vision” have been added to these domain names. The inclusion of random numerals, such as those featured in the <bing119.com>, <bing168.com>, <bing911.com>, and <bing1314.com> domain names do not distinguish the mark. Finally the term “baidu” in the <bingbaidu.com> refers to a competing search engine.
Respondent registered the domain names as follows:
<bing119.com>, registered on May 30, 2009;
<bing1314.com>, registered on May 31, 2009;
<bing168.com>, registered on May 31, 2009;
<bing911.com>, registered on May 30, 2009;
<bingaudio.com>, registered on May 10, 2011;
<bingbaidu.com>, registered on May 13, 2011;
<bingbio.com>, registered on June 24, 2009;
<bingbrazil.com>, registered on May 31, 2009;
<bingegypt.com>, registered on June 2, 2009;
<bingface.com>, registered on June 1, 2009;
<bingfrance.com>, registered on May 31, 2009;
<bingspain.com>, registered on May 31, 2009;
<bingvision.com>, registered on May 10, 2011.
Respondent is not known by the domain names, and the WHOIS information refers to Respondent as “Chiou Jian” a/k/a “none/Qiu Ji-an.” Respondent is not affiliated with, or authorized/licensed to use the BING mark by, Complainant.
Respondent’s <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names resolve to websites that advertise various related and competing products.
Respondent uses the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain name to send users to the <cashcashunite.com> domain name wherein there is a “Revolutionary New Way to Earn Money From Your Social Networks!” This unrelated business scheme is not a bona fide offering through these confusingly similar domain names.
The <bingbio.com> domain name is for sale for $10,000,000 USD. Respondent has also placed the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names up for a general offer to any bidder.
The <bing168.com> domain name has no active use.
Respondent has placed the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names up for a general offer of sale. Respondent has placed the <bingbio.com> domain name for sale for $10,000,000 USD.
Respondent has registered a multitude of infringing domain names that make use of the BING mark.
Respondent’s decisions in using these <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names to host competing hyperlinks illustrates an attempt to disrupt Complainant’s business.
Respondent creates a likelihood of confusion that Internet users will mistaken the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names’ resolving website at the <cashcashunite.com> domain name as being a scheme that is associated with the BING mark.
Respondent had to have knowledge of Complainant’s rights in the BING mark. The fact that Respondent registered thirteen infringing domain names suggests this knowledge. Respondent registered some domain names, such as <bingaudio.com> and <bingvision.com>, within a day or two of the announcement of Complainant’s “Bing Audio” and “Bing Vision” services.
Respondent’s inactive holding of the <bing168.com> domain name illustrates bad faith due to having been put to no active purpose for more than four (4) years.
B. Respondent
Respondent contents that the domain name at dispute incorporate the term “bing”, because it means “soldier兵” in Chinese. Respondent sought to create worldwide websites for army soldiers.
The Panel finds that:
1. the Domain Names <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com> are confusingly similar to Complainant’s marks.
2. the Respondent has not established rights and legitimate interests in the Domain Names <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com>
3. the Respondent has registered and is using the Domain Names <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com> in bad faith.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the domain name registrants have similar names, all share the same e-mail address (gian5185@gmail.com), all are located in the same general address (Zhubei City, Hsinchu County, Taiwan), all registrants use the same registrar, and all the domain names share that apparently false administrative contact information (Google, Inc.).
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant uses the BING mark in connection with the offering of online searches, and information services related to travel, shopping, and other commercial interest. Complainant offers its services in various countries around the world. Complainant registered the BING mark with the USPTO (Reg. No. 3,883,548 filed March 2, 2009; registered November 30, 2010). Previous panels have not required trademark registrations in the jurisdiction in which the respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has rights in the BING mark under Policy ¶ 4(a)(i), dating back to the filing of the trademark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Complainant argues that Respondent registered all of the <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com> domain names, all of which are confusingly similar to the BING mark. Complainant notes that all of the domain names include the irrelevant gTLD “.com” domain name. Complainant next notes the additions of generic terms such as “audio,” “bio,” “face,” or “vision” to these domain names does not distinguish the domain names from the mark. Complainant explains that the inclusion of random numerals, such as those featured in the <bing119.com>, <bing168.com>, <bing911.com>, and <bing1314.com> domain names do not distinguish the mark. Finally, Complainant claims that the term “baidu” in the <bingbaidu.com> refers to a competing search engine. The Panel notes that there are also various geographic terms, such as “brazil,” “france,” or “spain” that have also been added. The Panel initially finds that geographic descriptions merely amplify the confusing similarity of the domain name, as they give rise to an association between Complainant’s business in a particular area of the world. See, e.g., Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel further agrees that the addition of random numerals to the respective domain names does not create a meaningful differentiation from the mark, as the mark alone remains the dominant and relevant portion of the domain name. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel next finds that the various generic terms, such as “face,” “vision,” “audio,” or “bio” do not provide any clarity to these domain names. 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)). The Panel concludes that as the <bingbaidu.com> domain name refers to the mark of Complainant’s competitors, there is a chance that this domain name can be construed as confusingly similar to the BING mark. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors). The Panel therefore finds that there is a confusing similarity under Policy ¶ 4(a)(i) in regards to all of the disputed domain names.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the omplainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not known by the domain names, and that the WHOIS information refers to Respondent as “Chiou Jian” a/k/a “none/Qiu Ji-an.” Complainant states that Respondent is not affiliated with, or authorized/licensed to use the BING mark by, Complainant. The Panel notes that Respondent self-identifies in its Response as “Qiu ji-an.” The panel in Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), determined that the respondent was not known by the domain name when the response made no accusations to suggest otherwise. The Panel here likewise agrees that Respondent has not shown that it is known by any of these domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent’s <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names resolve to websites that advertise various related and competing products. The Panel notes that images of these websites illustrate that all of these domain names resolve to websites that promote the sale of domain names, downloads for competing “Google Chrome” products, and hyperlinks to BING-related services. See Complaint, Attached Ex. I. In Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008), the panel refused to find that the use of a domain name to promote related and competing commercial goods and services constituted a bona fide offering under the Policy. The Panel therefore finds that Respondent has made no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in regards to the <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names.
Complainant next argues that Respondent uses the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names to send users to the <cashcashunite.com> domain name wherein there is a “Revolutionary New Way to Earn Money From Your Social Networks!” Complainant believes that this unrelated business scheme is not a bona fide offering through these confusingly similar domain names. The Panel notes that these domain names do appear to resolve to the <cashcashunite.com> domain name, a website which purports to connect all of the Internet users social media accounts on the Internet and provide the Internet user with instructions on the acquisition of cash-generating advertising networks. See Complaint, Attached Ex. J. The panel in Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), determined that there was nothing bona fide about the use of a confusingly similar domain name to draw Internet users to an unrelated venture operated for the benefit of Respondent alone. The Panel here agrees that in regards to the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names, Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use through its operation of a wholly unrelated venture.
Complainant notes that the <bing168.com> domain name has no active use. The Panel notes that when entering the <bing168.com> domain name, Complainant could not access an active website. The Panel agrees that it is difficult to infer any right or legitimate interest under Policy ¶ 4(a)(ii) when Respondent has made no active use of a domain name it has held for over four years. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Complainant next notes that the <bingbio.com> domain name has been placed for sale for $10,000,000 USD. Complainant claims that the Respondent has also placed the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names up for a general offer of sale. The Panel notes that the <bingbio.com> domain name’s resolving website does indeed include a message stating that “This site(domain name) is for sale 10,000,000us dollars” indicating that the Internet user should send an e-mail to Respondent’s listed e-mail address. The Panel further notes that the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names are being hosted for general auction through Sedo.com. Previous panels have held that the general offering of a domain name for sale, as well as the specific listing of a domain name for a given price, evidences a lack of rights or legitimate interests in the domain name because this conduct illustrates the respondent’s readiness to dispense the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Thus the Panel finds that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in regards to all of the <bingbio.com>, <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names.
Complainant notes that Respondent has placed the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names up for a general offer to any bidder. Complainant further argues that Respondent has placed the <bingbio.com> domain name for sale for $10,000,000 USD. The Panel notes that the <bingbio.com> domain name’s resolving website does indeed include a message stating that “This site (domain name) is for sale 10,000,000us dollars.” The Panel further notes that the <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names are being hosted for general auction through Sedo.com. The Panel agrees that Respondent’s bad faith in regards to these domain names may be inferred from Respondent’s decision to place them up for auction to the public. See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel therefore finds Policy ¶ 4(b)(i) bad faith in regards to the bingbio.com>, <bing119.com>, <bing168.com>, <bing911.com>, <bing1314.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names.
Complainant next argues that Respondent has registered a multitude of infringing domain names that make use of the BING mark. In Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002), the panel found that the registration of multiple infringing domain names by a particular respondent was sufficient evidence for a finding of Policy ¶ 4(b)(ii) bad faith. The Panel likewise concludes that the presence of thirteen infringing domain names in this proceeding evidences Policy ¶ 4(b)(ii) bad faith on behalf of Respondent in regards to every single one of the disputed domain names given that it implies some attempt by Respondent to prevent Complainant from being able to reflect the BING mark in domain names.
Complainant next argues that Respondent’s decisions in using these <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names to host competing hyperlinks illustrates an attempt to disrupt Complainant’s business. The Panel notes that among the advertisements viewable through these domain names’ websites include hyperlinks to competing Google services. Previous panels have determined that bad faith disruption may arise from the promotion of competing goods or services through hyperlink advertisements. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel likewise finds that the use of the <bing119.com>, <bing1314.com>, <bing911.com>, <bingbrazil.com>, <bingegypt.com>, <bingfrance.com>, and <bingspain.com> domain names to promote Google services is evidence of Policy ¶ 4(b)(iii) bad faith.
Complainant next argues that Respondent creates a likelihood of confusion that Internet users will mistaken the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names’ resolving website at the <cashcashunite.com> domain name as being a scheme that is associated with the BING mark. The Panel again notes that the <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names’ resolving website at the <cashcashunite.com> domain name suggests that Internet users should enroll in Respondent’s program so that they can engage in cash-generating advertising and social media endeavors. The Panel finds that the use of these domain names to promote Complainant’s own unaffiliated and independent business illustrates an attempt to capitalize on the likelihood that Internet users will confuse Complainant as the source, origin, or endorser of the schemes and endeavors promoted through these websites. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel thus finds Policy ¶ 4(b)(iv) bad faith use and registration in regards to these <bingaudio.com>, <bingbaidu.com>, <bingface.com>, and <bingvision.com> domain names.
Complainant also argues that Respondent’s inactive holding of the <bing168.com> domain name illustrates bad faith due to having been put to no active purpose for more than four (4) years. The Panel again notes that the <bing168.com> domain name fails to resolve to any website. The Panel finds that such a prolonged period of inactivity gives rise to an indication of Policy ¶ 4(a)(iii) bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that Respondent had to have knowledge of Complainant’s rights in the BING mark. Complainant argues that he fact that Respondent registered thirteen infringing domain names suggests this knowledge. Complainant notes that Respondent registered some domain names, such as <bingaudio.com> and <bingvision.com>, within a day or two of the announcement of Complainant’s “Bing Audio” and “Bing Vision” services. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bing119.com>, <bing1314.com>, <bing168.com>, <bing911.com>, <bingaudio.com>, <bingbaidu.com>, <bingbio.com>, <bingbrazil.com>, <bingegypt.com>, <bingface.com>, <bingfrance.com>, <bingspain.com>, and <bingvision.com> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: October 3, 2013
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