Microsoft Corporation v. Pengcheng Zhang
Claim Number: FA1812001819611
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Pengcheng Zhang (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bingwallpaper.com>, registered with Epik 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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2018; the Forum received payment on December 5, 2018.
On December 5, 2018, Epik Inc. confirmed by e-mail to the Forum that the <bingwallpaper.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 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@bingwallpaper.com. Also on December 6, 2018, 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 December 26, 2018.
On December 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant uses the BING trademark in connection with online search, news, travel, shopping and other information services. Complainant has rights in the BING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,883,548, registered Nov. 30, 2010). See Compl. Ex. D. Respondent’s <bingwallpaper.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic or descriptive term “wallpaper” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bingwallpaper.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Pengcheng Zhang“ after the privacy shield was removed. See Compl. Ex. A. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Additionally, Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name in connection with a site that prominently displays the BING Logo and shows images of various BING wallpaper images that have been used at Complainant’s <bing.com> domain name in the past. See Compl. Ex. G. Respondent likely financially benefits through click-through referral fees from links displayed on the resolving webpage to services unrelated to Complainant or its services. Id. Further, Respondent’s use of a disclaimer on the bottom of the webpage does not sufficiently mitigate any confusion caused by the confusing similarity.
Respondent registered and uses the <bingwallpaper.com> domain name in bad faith. Respondent uses the domain name to commercially benefit off the goodwill of the BING mark through the use of click-through links to unrelated services. See Compl. Ex. G. Additionally, Respondent used a privacy shield to mask its true identity when it registered the at-issue domain name. See Compl. Ex. A. Further, Respondent clearly had knowledge of Complainant and its BING mark when it registered the domain name given the worldwide fame of the mark coupled with Respondent’s use of the stylized mark on the resolving webpage.
B. Respondent
Respondent does have rights and legitimate interests in the <bingwallpaper.com> domain name, and did not register or use the domain name in bad faith. Respondent does not attempt to cause any confusion with Complainant, and even specifically displays a disclaimer to mitigate any confusion. Further, Respondent’s use of the domain name is only intended to benefit Complainant and increase its popularity, not to harm Complainant. Additionally, the domain name has risen in popularity over the seven (7) years which Respondent has owned the domain name. See Resp. pgs. 1-3. Moreover, Respondent has invested much time and money into the domain name.
Complainant’s Bing mark is famous. The Respondent had knowledge of the mark when the domain name was registered without Complainant’s consent, The domain <bingwallpaper.com> contains the Complainant’s mark and the website to which the domain resolves contains links to third parties having no relationship to Complainant.
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.
Complainant claims rights in the BING mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,883,548, registered Nov. 30, 2010). See Compl. Ex. D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient to demonstrate a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the BING mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bingwallpaper.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic or descriptive term “wallpaper” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the <bingwallpaper.com> domain name is confusingly similar to the BING mark under Policy ¶ 4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), before the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <bingwallpaper.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Pengcheng Zhang” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BING mark. These assertions serve as evidence of Respondent’s lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <bingwallpaper.com> domain name under Policy ¶ 4(c)(ii).
Complainant also avers that Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services is furthered by its use of hyperlinks to redirect users to unrelated third-party websites. Using a domain name to offer generic links to third-party services generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). The screenshot provided by Complainant indicates that Respondent displays various links on the webpage such as “amazon,” “location,” and “underwater,” which purportedly redirect users to unrelated third-party websites. See Compl. Ex. G. As such, the Panel agrees that Respondent’s use of the domain name to redirect users to unrelated third-parties fails to amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Finally, Complainant claims that Respondent’s use of a disclaimer on the bottom of the webpage does not sufficiently mitigate any confusion caused by the confusing similarity. Use of a disclaimer is generally insufficient to confer rights and legitimate interest in a domain name per the Policy. See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name). Both Complainant and Respondent allude to the disclaimer on the bottom of the webpage, which Complainant claims reads “Bingwallpaper.com is not affiliated with Bing or its services in any way.” See Compl. pg. 6. Thus, the Panel may agree with Complainant and find that Respondent’s use of a disclaimer on the resolving webpage associated with the <bingwallpaper.com> domain name is insufficient to confer rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <bingwallpaper.com> domain name in bad faith as Respondent attempts to commercially benefit off the goodwill of the BING mark through the use of click-through links redirecting users to unrelated websites. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). As noted above, the screenshot provided by Complainant indicates that Respondent displays various links on the webpage such as “amazon,” “location,” and “underwater,” which purportedly redirect users to unrelated third-party websites. See Compl. Ex. G. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant avers that Respondent used a privacy shield to mask its true identity when it registered the at-issue domain name. A respondent’s attempt to hide its identity when registering a domain name can support a finding of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct). The WHOIS information submitted by Complainant identified Respondent as “Privacy Administrator / Anonymize, Inc.” See Compl. Ex. A. The Panel agrees with Complainant that by employing a privacy service when registering the disputed domain name, Respondent registered the domain name in bad faith.
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BING mark at the time of registering the <bingwallpaper.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent’s knowledge can be inferred given the worldwide fame of the mark coupled with Respondent’s use of Complainant’s stylized mark and images from Complainant’s webpages on the resolving webpage. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingwallpaper.com> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: January 3, 2019
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