Microsoft Corporation v.
Patrick McAuliffe
Claim Number: FA0912001297333
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwbing.com>, <wwbing.com>, <wwwwbing.com>, <bingf.com>, <b8ng.com>, <b9ng.com>, <binfg.com>,
and <binhg.com>,
registered with Register Spa.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 3, 2009; the
National Arbitration Forum received a hard copy of the Complaint on December 4, 2009.
On December 4, 2009, Register Spa confirmed by e-mail to the
National Arbitration Forum that the <wwwbing.com>, <wwbing.com>, <wwwwbing.com>, <bingf.com>, <b8ng.com>, <b9ng.com>, <binfg.com>,
and <binhg.com> domain
names are registered with Register Spa
and that the Respondent is the current registrant of the name. Register Spa
has verified that Respondent is bound by the Register
Spa 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 December 4, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 24, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@wwwbing.com, postmaster@wwbing.com, postmaster@wwwwbing.com, postmaster@bingf.com, postmaster@b8ng.com, postmaster@b9ng.com, postmaster@binfg.com, and postmaster@binhg.com by e-mail.
Respondent's Response was received
in electronic copy on December 14, 2009.
However, since no hard copy reached the National Arbitration Forum by the deadline,
the Response is considered deficient under ICANN Rule 5.
On December 22, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett G. Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and alleges that the disputed
domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate
interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed
domain names in bad faith.
The detail of the Complaint, so far as relevant, is found in the
Discussion which follows.
B. Respondent
As noted, the Response was non-compliant with
ICANN Rule 5. The Panel nonetheless has
discretion whether to admit the Response or not.[i]
The Response consists of a relatively short
email, without attachments, sent to the National Arbitration Forum on December
12, 2009. On December 14, 2009 the Forum
wrote to Respondent reminding him that he had until December 24, 2009 to submit
the hard copy of the Response. That
communication went on to explain to Respondent that “if you reply to this
email, copying the Complainant, confirming that your Response is complete, the
Forum will continue with the administration of this proceeding and appoint a
Panel within 5 days. The document will be included in the file, and will
be treated as a non-compliant Response.”
On December 14, 2009 Respondent replied to the Forum confirming that the
Response was complete.
Notwithstanding a party’s obligation to properly inform itself of the
Rules to the UDRP, it seems to this Panel that there is some chance that
Respondent may have not properly understood the Forum’s December 24, 2009
message. Making allowance for that
possibility and taking account of the brief nature of the Response and the fact
that it does rely on any documentary evidence which should properly be
available to Complainant in hard copy form, the Panel has decided to admit the
Response.
For simplicity’s sake, the Panel has set out below the Response in
full.
A."CONFUSINGLY SIMILAR DOMAIN NAMES"
Microsoft launched bing.com on
28th May 2009. This was a full two
months AFTER I registered wwwbing.com on on 26th march 2009. I was
at that time unaware of wwwbing.com being similar to the search engine
bing.com.
B."NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME"
I am using the domain wwwbing.com to promote a children's book called
"Walter Will Wawrinka Bing". It involves a troll who has
supernatural
and magical powers in modern
5th April 2010 in
C."REGISTRATION AND USE IN BAD FAITH"
I was not familiar with Complainant's BING trademark at the time of
registration of the domain name wwwbing.com. The site is currently
non-commercial.
My email address is pmcauliffe2003@yahoo.co.uk which can be officially
seen in the registrant details for wwwbing.com or on wwwbing.com or at
my registrar Namesco Ltd United Kingdom. I do not own the email address
patrick.mcauliffe@gmail.com. I never
sent an email to Bill Gates offering to sell the domain.
FINDINGS
1.
Complainant
was founded in 1975 and has since manufactured, marketed and sold computer
software and offered related products and services. Its business is enormous.[ii]
2.
BING is
the name Complainant decided upon in 2009 as the name to replace “Live Search” for
its internet search engine.
3.
Complainant
made that search engine publicly available through <www.bing.com> on June
1, 2009.
4.
Complainant
owns numerous trademark applications and registrations throughout the world for
BING.
5.
Respondent registered the disputed domain names in
the following sequence:
March
10, 2009 - <b8ng.com>,
<b9ng.com>
March 26, 2009 - <wwwbing.com>
April 6, 2009 - <wwbing.com>,
<wwwwbing.com>, <binfg.com>
May 11, 2009 - <bingf.com>,
<binhg.com>
6.
There is no relationship between the parties and
Complainant has not authorized Respondent to use its trademark or to register
any domain name incorporating its trademark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Policy ¶ 4(a)(i) requires a two-fold enquiry. First, a threshold investigation of whether a
complainant has rights in a trademark, followed by an assessment of whether the
trade mark and the domain name are identical or confusingly similar.
Complainant has rights in the trademark BING
by virtue of its various trademark registrations.[iii]
The remaining enquiry is whether the domain names are identical or
confusingly similar to the trademark. To
reiterate, the comparison is BING with <wwwbing.com>,
<wwbing.com>, <wwwwbing.com>, <bingf.com>, <b8ng.com>, <b9ng.com>,
<binfg.com>, and <binhg.com>.
In making that comparison it is broadly accepted that the gTLD, “.com”
can be disregarded.[iv] Complainant
contends that the disputed domain names are either legally identical or
confusingly similar to its trademark because, once the gTLD is subtracted, the
domain names differ from its trademark only in minor misspellings of the
trademark or by the addition of other non-distinctive matter such as “www.”[v]
The Panel agrees with Complainant’s
submissions and finds all of the disputed domain names at least confusingly
similar to the trademark BING.
Respondent’s submissions have no bearing on
these findings. For the purposes of
Policy ¶ 4(a)(i) it is inconsequential that trademark rights postdate the
registration date of a disputed domain name.[vi]
The Panel finds that Complainant has
established the first limb of the Policy.
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests.[vii]
The Policy states that any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of
the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making 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 or service mark at issue.
The WHOIS data does not support any argument that Respondent might be
commonly known by the disputed domain names.
There is no evidence that Respondent has any trademark rights. Complainant has stated there to be no
relationship between it and Respondent. The Panel finds that Complainant has
established a prima facie case that Respondent lacks rights or
legitimate interests in the disputed domain name.
Respondent attempts to show a legitimate interest because he is using the domain wwwbing.com to promote a
children's book called "Walter Will Wawrinka Bing" which will be
published in 2010.
There is no evidence of that book or of a
publishing contract for it, or an explanation as why Respondent should have
registered another seven domain names in addition to <wwwbing.com>. In the
absence of such evidence or explanation, and in view of the further evidence from
Complaint showing that Respondent also registered permutations of the other
mooted names contemplated by Complainant to replace “Live Search,”[viii]
the Panel can give Respondent’s submission on legitimate interest little
credibility. Panel finds that Respondent
has not used the disputed domain names in connection with a bona fide offering of goods and
services, nor for a legitimate noncommercial or fair use.
The Panel finds that Complainant has
established the second limb of the Policy.
Policy ¶ 4(b) sets out the circumstances
which shall be evidence of the registration and use of a domain name in bad
faith. They are:
(i) circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you
have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by
using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your website or other on‑line
location, by creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of your website or
location or of a product or service on your website or location.
What is noteworthy about Policy
¶ 4(b)(i)-(iv) is that they are all cases of both registration and use in bad faith. Complainant has not relied on any one or more
of those grounds but it is logical to first consider their possible application
to the facts.
In spite of Respondent’s denial, the evidence is clear that on June 8, 2009 Respondent sent an
email to Complainant with a view to sale of the domain name <wwwbing.com> to
Complainant. Although no sum was
mentioned in that email, Respondent wrote that “there is a recession in
The evidence shows that the press began
speculating as to Complainant’s likely adoption of the BING trademark as early
as August 1, 2008. Trademark
applications were filed for BING in a number of jurisdictions soon after. The Panel finds it more likely than not that
by the time Respondent
registered the domain name <wwwbing.com>
in March 2009, Complainant’s trademark would have been known to a significant
section of the public.
In those circumstances the Panel can conclude that it is more likely
than not that Respondent registered
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name to Complainant.
The Panel therefore finds that the registration of <wwwbing.com> falls squarely within
the circumstances envisaged by Policy ¶ 4(b)(i) and so finds that the domain
name was registered and used in bad faith.
Similar reasoning applies to the other disputed domain names. They have already been found to be
confusingly similar to Complainant’s trademark.
Respondent has not shown any bona
fide use of them and Respondent’s submission that it has a legitimate
interest in the names has been rejected by the Panel. It follows that it is more likely than not
that Respondent registered all of the disputed domain names with the primary
intention described by Policy ¶ 4(b)(i).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbing.com>, <wwbing.com>, <wwwwbing.com>, <bingf.com>, <b8ng.com>, <b9ng.com>, <binfg.com>,
and <binhg.com> domain
names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 29, 2009
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[i] See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.”).
[ii] As
recognized in numerous earlier UDRP proceedings. See,
e.g., Microsoft Corporation
v. Phayze Inc., D2003-0750 (WIPO Nov. 13, 2003).
[iii] The Policy does not distinguish between
registered and unregistered trademark rights (see McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002)), however a trademark
registered with a national authority is prima
facie evidence of trademark rights for the purposes of the Policy. See State Farm Mut. Auto. Ins.
[iv] See 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.).
[v] See
Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
that the prefix "www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); for the same proposition, see also
Hewlett-Packard Company v. World Wide Web
Home Player, FA 96267 (Nat. Arb. Forum Jan. 8, 2001); Marie Claire Album
v. Blakely, D2002-1015 (WIPO Dec. 23, 2002); Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000); see also State Farm Mutual
Automobile Insurance Company v. Eric Gallite, FA 1176737 (Nat. Arb. Forum
May 20, 2008) (“Adding numerals also does very little to eliminate the
possibility of confusion between the mark and a domain name incorporating the
mark”); see also Am. Online, Inc. v.
[vi] See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (holding that “[A]lthough the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). In any event, a number of Complainant’s trademark applications for BING, such as Hong Kong Reg. No. 301,295,695 filed March 2, 2009, predated the earliest of Respondent’s domain names.
[vii] See Do The Hustle, LLC v. Tropic Web,
D2000‑0624 (WIPO
[viii] The
evidence shows that from the beginning of August 2008 news reports broke that Microsoft was going to be
rebranding its search engine from Live Search to another name, possibilities
being BING, KUMO and HOOK. The evidence
shows that some media commentators regarded KUMO as the more likely successor
to “Live Search.” The evidence shows
that Respondent registered <kkumo.co.uk> and <kum0.co.uk> on March
9, 2009 and <kuumo.co.uk> on March 11, 2009. Moreover, Respondent registered other
extension including BING, such as <bingg.co.uk> on March 12, 2009 and
<wwwbing.co.uk> on April 6, 2009.