Microsoft Corporation v. Reaction Design & Printing
Claim Number: FA1011001359370
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Reaction Design & Printing (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 18, 2010; the National Arbitration Forum received payment November 18, 2010.
On November 18, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@bingajax.com, postmaster@bingbooty.com, postmaster@bingjava.com, postmaster@bingprinting.com, postmaster@bingtogoogle.com, postmaster@bingwhitepages.com. Also on November 22, 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 December 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The multiple domain names that Respondent registered, <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com>, are confusingly similar to Complainant’s BING mark.
2. Respondent has no rights to or legitimate interests in the <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com> domain names.
3. Respondent registered and used the <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, founded its software business in 1975. Complainant introduced its BING mark May 28, 2009, for the promotion of its online search engine. The introduction of the BING mark was followed by global press coverage of the release. Complainant holds numerous trademark registrations of its BING mark throughout the world including the State Intellectual Property Office of the People’s Republic of China (“SIPO”) (e.g. Reg. No. IR 996,797 issued March 2, 2009).
Respondent, Reaction Design & Printing, registered the disputed domain names <bingajax.com> <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com> June 24, 2009. The <bingprinting.com> domain name is parked at a website with no substantive content. The remaining disputed domain names are completely inactive, generating error messages when accessed.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 urges that it has well-established rights in its BING mark. A Complainant establishes rights in these proceedings by showing a trademark registration for the mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (Complainant established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel held that it is irrelevant whether the Complainant registered its trademark in the country of Respondent’s residence. Here, Complainant holds numerous trademark registrations of its BING mark throughout the world including SIPO (e.g. Reg. No. IR 996,797 issued March 2, 2009). Therefore, the Panel finds that Complainant established rights in its BING mark through its trademark registration with a federal trademark authority under Policy ¶ 4(a)(i). 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).
Complainant contends that Respondent’s disputed domain names are confusingly similar to its BING mark. The disputed domain names incorporate Complainant’s entire mark and merely add the descriptive terms “ajax”, “java”, and “google” (software and web-related products), the generic terms “whitepages”, “printing”, and “booty”, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of generic or descriptive words does not distinguish the disputed domain names from Complainant’s mark. 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 also finds that the addition of a gTLD does not differentiate the disputed domain names from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BING mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant also asserts that Respondent has no rights to or legitimate interests in the disputed domain names. Complainant must make a prima facie showing to support its allegations and once it does so, the burden of proof shifts to Respondent to show that it does have such rights and legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent did not respond to the Complaint; and in such circumstances, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See 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). However, the Panel still reviews the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant urges that Respondent is not commonly known by the disputed domain names. The WHOIS record indicates that Respondent is “Reaction Design & Printing,” which is not nominally similar to the disputed domain names. Complainant also asserts that it has not licensed or authorized Respondent to use its BING mark with the disputed domain names. The Panel finds no supplemental information in the record that indicates that Respondent is commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingtogoogle.com>, and <bingwhitepages.com> domain names, except for one, are completely inactive and generate error messages when accessed. The Panel finds that Respondent’s hosting of inactive websites and failure to make any demonstrable preparations to use the disputed domain names is not a bona fide offering of good or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name.
The <bingprinting.com> domain name redirects to a parked website with no substantive content. The resolving website is unrelated to Complainant’s business. The Panel finds that this use by Respondent of the disputed domain name also does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Complainant contends that Respondent is offering to sell the <bingwhitepages.com> domain name to an overseas company as demonstrated through Complainant’s correspondence with Respondent. The Panel finds that Respondent’s conduct in attempting to sell the disputed domain name further demonstrates that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See 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); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights)
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and used the disputed domain names in bad faith. Complainant alleges that Respondent is attempting to sell the <bingwhitepages.com> domain name and is in negotiations with an overseas company. An offer to sell a disputed domain names may be taken as evidence that the registration and use was in bad faith under a Policy ¶ 4(b)(i) analysis. See 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).”); 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). The Panel finds that Respondent’s attempt to sell the domain name supports findings of bad faith use and registration under Policy ¶ 4(b)(i).
The Panel further is permitted to make an inference that Respondent is commercially benefiting from its use of the <bingprinting.com> domain name. The disputed domain name resolves to a parked website featuring blogging information. Internet users interested in Complainant’s services may become confused as to Complainant’s affiliation with the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name may be taken as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
The Panel notes that examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b) by considering the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant asserts that Respondent’s registration of the disputed domain names is evidence of Respondent’s opportunistic bad faith. At the time of Respondent’s registration, Complainant’s BING mark had received substantial global press coverage and was familiar to consumers around the world. Respondent registered the disputed domain names only one month after Complainant announced its BING search engine. Looking to the totality of the circumstances, the Panel finds that Respondent’s use of the disputed domain names supports findings of bad faith under Policy ¶ 4(b). See 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”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
Five of the six disputed domain names are inactive and generate error messages when accessed by Internet users. The Panel finds that Respondent’s use of the disputed domain names to operate inactive or parked websites for over a year constitutes bad faith use and registration constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Respondent registered and used or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <bingajax.com>, <bingbooty.com>, <bingjava.com>, <bingprinting.com>, <bingtogoogle.com>, and <bingwhitepages.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 22, 2010.
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