Microsoft Corporation v. Jorge Galvez Llompart
Claim Number: FA1105001388640
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Jorge Galvez Llompart (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingwebmaster.com> and <buscadorbing.net>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2011; the National Arbitration Forum received payment on May 13, 2011.
On May 14, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <bingwebmaster.com> and <buscadorbing.net> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 May 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2011 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@bingwebmaster.com and postmaster@buscadorbing.net. Also on May 16, 2011, 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 June 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <bingwebmaster.com> and <buscadorbing.net> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent does not have any rights or legitimate interests in the <bingwebmaster.com> and <buscadorbing.net> domain names.
3. Respondent registered and used the <bingwebmaster.com> and <buscadorbing.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a large global provider of software and computer related products and services. Complainant owns multiple registrations for the BING mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,883,548; filed March 2, 2009; issued November 30, 2010). Complainant uses the mark to support and promote its online search engine business.
Respondent, Jorge Galvez Llompart, registered both of the disputed domain names on May 27, 2009. The <buscadorbing.net> domain name resolves to a site that is inactive. The <bingwebmaster.com> domain name resolves to a site which is identical to Complainant’s own website.
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 its rights in the BING mark by filing and registering that mark with the USPTO (e.g., Reg. No. 3,883,548 filed March 2, 2009 issued November 30, 2010). Previous panels have determined that registering a mark with the USPTO will provide the registrant defendable rights in the mark dating back to the filing date. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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 established its rights in the BING mark under Policy ¶ 4(a)(i) dating back to March 2, 2009 due to the registrations it holds for the mark with the USPTO.
Complainant also contends that the disputed domain names are confusingly similar to its own BING mark. The disputed domain names both include the entire mark while adding two different generic top-level domains (“gTLDs”) “.com” and “.net.” The disputed domain names also include the words “buscador,” a Spanish term meaning “searcher,” and “webmaster.” The Panel finds that the addition of a descriptive term and generic term along with a gTLD does not sufficiently differentiate the disputed domain names from Complainant’s BING mark, making them confusingly similar under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its initial burden of proof by making a prima facie case showing Respondent lacks rights or legitimate interests in the disputed domain names. Thus, the burden now lies on Respondent to prove it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Although Respondent’s failure to file a response in this matter allows the Panel to assume it lacks rights or legitimate interests in the disputed domain names, the Panel will still inspect the entire record to determine whether Respondent has rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known by either disputed domain name. Respondent has offered no evidence linking himself and the disputed domain names. The WHOIS information for both disputed domain names lists the registrant as “Jorge Galvez Llompart.” The Panel finds that Respondent is not commonly known by either disputed domain name under Policy ¶ 4(c)(ii) because neither the WHOIS information or any other information on the record indicated otherwise. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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 contends that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <buscadorbing.net> domain name. The disputed domain resolves to an inactive site. The Panel finds that Respondent’s use, or lack thereof, of the disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <bingwebmaster.com> domain name. The disputed domain name resolves to a site which is identical to Complainant’s own website, prominently displaying Complainant’s logos. The Panel finds that Respondent’s attempt to pass itself off as Complainant does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant claims that Respondent is using the <bingwebmaster.com> domain name in bad faith because the disputed domain name resolves to a site identical to Complainant’s offering identical services. The disputed domain does in fact resolve to a site which is apparently attempting to pass itself off as Complainant’s own site. The Panel finds that Respondent’s attempt to pass itself off as Complainant via the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Although Complainant does allege bad faith registration and use in accordance with one of the Policy ¶ 4(b) factors, the enumerated options in that provision were never intended to be an exclusive list of ways to show bad faith but merely illustrative versions of what may constitute bad faith registration and use under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). The Panel is therefore allowed to examine the totality of the circumstances surrounding the registration and use of the disputed domain name or names in question and infer from that examination a potential violation or act in accordance with Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant alleges that Respondent has registered and used the <buscadorbing.net> domain name in bad faith under the circumstances presented. Respondent’s disputed domain name resolves to a site that is inactive. Previous panels have determined that failure to make an active use of a disputed domain name constitutes bad faith registration and use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name 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). Therefore, the Panel finds that Respondent’s failure to make an active use of the <buscadorbing.net> domain name is affirmative proof of bad faith registration and use under Policy ¶ 4(a)(iii).
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 <bingwebmaster.com> and <buscadorbing.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 23, 2011
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