Microsoft Corporation v. Tameerah Worthinton LLC / Tameerah Worthinton
Claim Number: FA1011001360343
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Tameerah Worthinton LLC / Tameerah Worthinton (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <answerbing.com> and <blogsbing.com>, registered with Name.com LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2010; the National Arbitration Forum received payment on November 24, 2010.
On November 30, 2010, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <answerbing.com> and <blogsbing.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@answerbing.com and postmaster@blogsbing.com. Also on December 3, 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 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <answerbing.com> and <blogsbing.com> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <answerbing.com> and <blogsbing.com> domain names.
3. Respondent registered and used the <answerbing.com> and <blogsbing.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, uses its BING mark to provide search engine services and news, travel, shopping, and other informational services. Complainant holds a trademark registration with the European Union Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 996,700 issued March 2, 2009) for its BING mark.
Respondent registered the <answerbing.com> and <blogsbing.com> domain names on May 31, 2009. The disputed domain names resolve to a website featuring search engine services and hyperlinks to third-parties unrelated to Complainant. Respondent has offered to sell the disputed domain names.
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.
Previous panels have determined that a federal trademark registration is sufficient for a complainant to establish rights in a mark and that the complainant is not required to hold a trademark within the country a respondent resides in. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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). Complainant holds a trademark registration with the OHIM for its BING mark (Reg. No. 996,700 issued March 2, 2009). Thus, the Panel holds that Complainant has established rights in its BING mark under Policy ¶ 4(a)(i).
The Panel further finds that the disputed domain name is confusingly similar to Complainant’s mark where the sole differences between the domain names and mark are the addition of a generic term and a generic top-level domain (“gTLD”). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In this case, the <answerbing.com> and <blogsbing.com> domain names incorporate the generic terms “answer” or “blogs” respectively and the gTLD “.com.” The Panel concludes that such additions fail to differentiate the disputed domain names from Complainant’s mark, rendering the <answerbing.com> and <blogsbing.com> domain names confusingly similar to Complainant’s BING mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in either the <answerbing.com> or the <blogsbing.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <answerbing.com> and <blogsbing.com> 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
In order for a respondent to be commonly known by a disputed domain name, the WHOIS information must indicate that the respondent is known by the disputed domain name, there must be evidence in the record that the respondent is known by the domain name, or the complainant authorized the respondent to use the disputed domain name. 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 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). The WHOIS information identifies the registrant of the domain names as “Tameerah Worthinton LLC / Tameerah Worthinton,” which is not similar to the <answerbing.com> and <blogsbing.com> domain names. The Panel fails to find any evidence in the record that indicates that Respondent is commonly known by the disputed domain names. Finally, Complainant asserts that it did not license or permit Respondent to use Complainant’s BING mark. Therefore, the Panel concludes that Respondent is not commonly known by the <answerbing.com> and <blogsbing.com> domain names under Policy ¶ 4(c)(ii).
In order for a respondent to demonstrate rights or legitimate interests, a respondent must demonstrate that its use of the disputed domain name is either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel holds that the use of a domain name to resolve to a website featuring a commercial search engine and hyperlinks unrelated to a complainant is not a bona fide offering and is not a noncommercial use. See Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also 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). Respondent’s <answerbing.com> and <blogsbing.com> domain names resolve to websites that feature commercial search engines and hyperlinks unrelated to Complainant. Respondent likely profits from the hyperlinks through the receipt of click-through fees. Consequently, the Panel finds that Respondent’s use of the <answerbing.com> and <blogsbing.com> domain names does not constitute 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).
The Panel concludes that an offer to sell a domain name is further evidence that Respondent lacks rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also 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)). Respondent is offering to sell the disputed domain name on the websites resolving from the <answerbing.com> and <blogsbing.com> domain names. Thus, the Panel holds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s offer to sell a disputed domain name presumably for more than Respondent’s out-of-pocket costs is evidence of bad faith registration and use under Policy ¶ 4(b)(i). 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 America 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). Respondent has offered to sell both disputed domain names on the website resolving from the disputed domain names. The Panel presumes that Respondent was offering the domain names for more than Respondent’s out-of-pocket costs. Under Policy ¶ 4(b)(i), the Panel determines that Respondent’s registration and use of the <answerbing.com> and <blogsbing.com> domain names was and is in bad faith.
The Panel holds that Respondent has registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iv), if Respondent uses the domain name to host a website that features a commercial search engine and click-through hyperlinks in order to profit from confusion among Internet users as to Complainant’s affiliation with the disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); 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)). Respondent’s <answerbing.com> and <blogsbing.com> domain names resolve to websites that feature hyperlinks unrelated to Complainant’s business and a commercial search engine that does compete with Complainant’s business. Due to the fact that the disputed domain names are confusingly similar to Complainant’s mark, Internet users will likely become confused as to Complainant’s affiliation with the disputed domain name, resolving website, search engine services, and unrelated, click-through hyperlinks. Therefore, the Panel determines that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been 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 <answerbing.com> and <blogsbing.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 5, 2011
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