Microsoft Corporation v. ClubREM
Claim Number: FA1012001361184
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is ClubREM (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bingecommerce.com>, registered with Dotster.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 1, 2010.
On December 2, 2010, Dotster confirmed by e-mail to the National Arbitration Forum that the <bingecommerce.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@bingecommerce.com. Also on December 2, 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 the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bingecommerce.com> domain name is confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingecommerce.com> domain name.
3. Respondent registered and used the <bingecommerce.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corp., is a large global company that provides a wide range of computer software and web based services. Complainant has been doing business in this field since 1975. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BING mark (Reg. No. 3,888,548 filed March 2, 2009; issued November 30, 2010). The BING mark is used to support Complainant’s web based search, news, travel, and other information services.
Respondent, ClubREM, registered the disputed domain name on October 23, 2010. The disputed domain name resolves to a site offering search services and links to competitors of Complainant. The site also offers the disputed domain name for sale on the headline.
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.
Complainant contends that it has established rights in the mark via registration with a federal trademark authority. Previous panels have found that registration of a trademark with a federal trademark authority is sufficient to establish rights in the mark. Previous panels have also determined that the date the rights in a mark vest is the filing date of the registration. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has established rights in its BING mark under Policy ¶ 4(a)(i), based on the Complainant’s trademark registration with the USPTO (e.g., Reg. No. 3,883,548 filed March 2, 2009; issued Nov. 30, 2010).
Complainant also contends that Respondent’s <bingecommerce.com> domain name is confusingly similar to its BING mark. The disputed domain name incorporates the entirety of the mark while adding the generic top-level domain, “.com,” and adding the descriptive term, “ecommerce.” The Panel finds that Respondent has failed to sufficiently differentiate the disputed domain name from Complainant’s BING mark by adding a gTLD and a descriptive term. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Thus, the Panel concludes that Respondent’s <bingecommerce.com> domain name is confusingly similar to Complainant’s BING mark according to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed mark after Complainant has met its prima facie burden. 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.”). When a respondent fails to provide a response to the initial complaint, a panel may assume that it does not have rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”) However, without a response the Panel will still examine the record in its entirety to determine whether Respondent has rights or legitimate interests in the disputed domain name according the factors contained in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name <bingecommerce.com>. Respondent has not set forth any evidence to support the finding that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of <bingecommerce.com> as “ClubREM,” which is not similar to the <bingecommerce.com> domain name. Thus, the Panel finds that Respondent is not commonly known by 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 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).
Complainant also contends that Respondent is not engaging in any bona fide offering of goods and services or making a legitimate noncommercial or fair use of the <bingecommerce.com> domain name. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors, as well as a search function in direct competition with Complainant’s own services. Respondent apparently receives click-through fees from the sites to which it provides links. The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Additionally, Complainant contends that Respondent’s offer to sell the domain name supports its assertion that Respondent lacks legitimate interests or rights in the disputed domain name. Respondent’s <bingecommerce.com> domain name resolves to a site that offers to sell the domain name via a link in the headline of the site. The Panel finds that Respondent’s offer to sell the domain name is evidence of Respondent’s lack of legitimate interests or rights under Policy ¶ 4(b)(i). 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)); see also 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).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent’s general offer to sell the domain name constitutes bad faith registration and use. Respondent’s <bingecommerce.com> domain name resolves to a site that offers to sell the domain name. The Panel finds that Respondent’s offer to sell the domain name 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 Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Respondent’s <bingecommerce.com> domain name resolves to a site offering a search service along with links to competitors of Complainant. Complainant asserts that the disputed domain name disrupts its business by offering a competing search service and links to its competitors. The Panel finds that Respondent’s use of the confusingly similar domain name to offer competing services and links disrupts Complainant’s business and constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel finds that Respondent receives click-through fees from the links it posts on the website resolving from the disputed domain name. Respondent capitalizes on the confusingly similar domain name by redirecting Internet users to its own site and profiting from that confusion. Therefore, the Panel finds that Respondent’s use of the <bingecommerce.com> domain name constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingecommerce.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 10, 2011
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