Microsoft Corporation v. Qiaojunxiang
Claim Number: FA1108001403020
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Qiaojunxiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adbing.com>, registered with Xiamen eName Network Technology Corporation Limited d/b/a eName Corp.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 12, 2011. The Complaint was submitted in both Chinese and English.
On August 14, 2011, Xiamen eName Network Technology Corporation Limited d/b/a eName Corp confirmed by e-mail to the National Arbitration Forum that the <adbing.com> domain name is registered with Xiamen eName Network Technology Corporation Limited d/b/a eName Corp and that Respondent is the current registrant of the name. Xiamen eName Network Technology Corporation Limited d/b/a eName Corp has verified that Respondent is bound by the Xiamen eName Network Technology Corporation Limited d/b/a eName Corp 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 August 17, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 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@adbing.com. Also on August 17, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
TRADEMARK/SERVICE MARK INFORMATION
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Among other things, Microsoft provides consumers and businesses with online search, news, travel, shopping and other information services under the trademark BING:
Microsoft officially introduced the BING trademark to the press and public on May 28, 2009. Prior to the official announcement, the press began speculating as to Microsoft’s use of the BING trademark as early as August 1, 2008, after a number of news reports broke that Microsoft was going to be rebranding its search engine from Live Search to other names, including BING, KUMO and HOOK. Representative publications include ZDNet dated August 1, 2008, WebProNews dated November 24, 2008, Notebookitalia.it dated November 25, 2008, The Washington Post dated March 2, 2009, PC World dated March 3, 2009 and many others. These publications were made all over the world and were prior to the registration of the disputed domain name which was on the same day as the official press release, namely, May 28, 2009. It has been found by at least one prior panelist that by March of 2009, the BING trademark would have become known to a significant portion of the public. See Microsoft Corp. v. Patrick McAuliffe, FA0912001297333 (Nat. Arb. Forum December 29, 2009)(“the evidence shows that the press began speculating as to Complainant’s likely adoption of the BING trademark as early as August 1, 2008” and that by March, 2009 “Complainant’s [BING] trademark would have been known to a significant section of the public”).
Microsoft owns numerous trademark registrations for BING throughout the world, including the following:
|
Country |
Classes |
Filing date |
Registration Date |
Registration Number |
|
Colombia |
42 |
3/12/2009 |
9/22/2009 |
388,741 |
|
Colombia |
38 |
3/12/2009 |
10/26/2009 |
390,407 |
|
Colombia |
35 |
3/12/2009 |
10/26/2009 |
390,405 |
|
Costa Rica |
42 |
3/2/2009 |
8/13/2009 |
193,535 |
|
Costa Rica |
38 |
3/2/2009 |
8/3/2009 |
193,375 |
|
Costa Rica |
35 |
3/2/2009 |
7/31/2009 |
193,216 |
|
Ecuador |
38 |
3/20/2009 |
9/8/2009 |
2213-09 |
|
Ecuador |
35 |
3/20/2009 |
9/8/2009 |
2214-09 |
|
European Community |
39 |
3/2/2009 |
3/2/2009 |
IR 996,700 |
|
Guatemala |
42 |
3/10/2009 |
9/1/2009 |
165,426 |
|
Guatemala |
38 |
3/10/2009 |
8/31/2009 |
165,423 |
|
Guatemala |
35 |
3/10/2009 |
9/1/2009 |
165,427 |
|
Hong Kong |
9;35;38;41;42 |
3/2/2009 |
3/2/2009 |
301,295,695 |
|
Mexico |
39 |
3/5/2009 |
3/5/2009 |
1,127,138 |
|
Mexico |
42 |
3/5/2009 |
3/5/2009 |
1,138,359 |
|
Mexico |
41 |
3/5/2009 |
3/5/2009 |
1,117,109 |
|
Mexico |
38 |
3/5/2009 |
3/5/2009 |
1,105,140 |
|
Mexico |
35 |
3/5/2009 |
3/5/2009 |
1,105,139 |
|
Mexico |
9 |
3/5/2009 |
3/5/2009 |
1,105,138 |
|
New Zealand |
9;35;38;41;42 |
9/22/2008 |
9/22/2008 |
796,467 |
|
Panama |
35 |
3/5/2009 |
3/5/2009 |
179,519 |
|
Peru |
42 |
3/3/2009 |
6/18/2009 |
57,278 |
|
Peru |
38 |
3/3/2009 |
6/18/2009 |
57,277 |
|
Peru |
35 |
3/3/2009 |
6/18/2009 |
57,276 |
|
Taiwan |
39 |
3/2/2009 |
9/16/2009 |
1,378,808 |
|
Taiwan |
9;35;41;38 |
3/2/2009 |
10/16/2009 |
1,383,046 |
|
United States |
39 |
3/2/2009 |
11/30/2010 |
3,883,548 |
|
United States |
9;35;38;41;42 |
3/2/2009 |
06/7/2011 |
3,975,040 |
Microsoft also holds International Registration No. 996,797 and 996,700 which were filed on March 2, 2009 and designate a variety of countries, including Australia, China (the location of the Respondent), the European Community, Japan, Korea, Russia, Singapore and others. The filing dates for these registrations predate the registration of the disputed domain names.
Microsoft also owns the domain name <bing.com> which was registered on January 29, 1996.
ICANN Rule 3(b)(viii).
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s famous BING trademark.
The disputed domain name incorporates Complainant’s BING trademark in its entirety, adding only the generic or descriptive term “ad” and the generic top-level domain “.com.” These changes are not sufficient to avoid a likelihood of confusion. Nortel Networks Ltd. v. BuyMeBuyMe.com Inc., FA0604000671847 (Nat. Arb. Forum May 16, 2006). See also Microsoft Corp. v. Tameerah Worthinton, FA101101360343(Nat. Arb. Forum January 5, 2011)(finding <answerbing.com> and <blogsbing.com> confusingly similar to BING and awarding transfer); Microsoft Corp. v. None a/k/a Prakash Prasad Timilsina, FA0906001271165 (Nat. Arb. Forum July 30, 2009)(finding <bing-news.com> confusingly similar to BING and noting that “use of the domain name must inevitably cause confusion with the Complainant’s mark on the part of Internet users”); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain name is confusingly similar to Complainant’s BING trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s BING trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as qiaojunxiang. Respondent is not commonly known by Complainant’s BING trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s BING trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain resolves to a web site which contains links to other sites which allow visitors to purchase products. Presumably, Respondent receives compensation for directing consumers to third-party sites. This is not a use in connection with 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 Microsoft Corporation v. Goodman, FA 1294422 (Nat. Arb. Forum, Dec. 31, 2009) (finding that use of <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>, and <bingrobot.com> was not 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) where the domain names wree used in connection with links to third party websites); See also, Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, Jan. 10, 2007) (finding no legitimate interest in the domain name <fossill.com> where the domain name resolved to a website featuring links to third party websites); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); and WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent has taken Complainant’s BING trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain. The use of a domain name that is confusingly similar to Complainant’s well known trademark to attract consumers to Respondent’s own website, and/or to refer consumers to third parties, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). “The Respondent’s use is little more than the use of a famous trademark to divert traffic to…itself.” Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwei, D2005-0642 (WIPO October 12, 2005) (finding no rights or legitimate interests in the domain name <msnmoney.com>).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s BING trademark was familiar to countless consumers worldwide through ubiquitous press coverage as well as through the official worldwide press release regarding BING. Given the fact that Respondent registered the domain name the day of the worldwide press regarding Complainant’s BING service, it is abundantly clear that Respondent was not only familiar with Complainant’s BING trademark at the time of registration of the domain name, but intentionally adopted a domain name incorporating the BING mark in order to create an association with Complainant and its products and services. This is further demonstrated by the nature of the domain name itself. The term “ad” clearly relates to some of Complainant’s BING services, namely the dissemination of advertising for others via the internet through its BING search engine. This alone establishes that Respondent was aware of Complainant and its rights to the BING mark.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its well-known mark is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
The use of the disputed domain name in connection with a website that offers links to third party websites selling goods and services for which Respondent receives referral or click through fees supports a finding of bad faith registration and use. Microsoft Corporation v. Goodman, FA 1294422 (Nat. Arb. Forum, Dec. 31, 2009) (finding that use of <bingblock.com>, <bingblogging.com>, <bingquicksearch.com>, and <bingrobot.com> constitutes bad faith registration and use under Policy ¶4(b)(iv)); See also, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); and 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)).
Furthermore, the timing of this registration reflects opportunistic bad faith. See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(finding that registration of <javastore.com> a little over a month after the complainant’s announcement of a similarly named service was evidence of “opportunistic bad faith under Policy ¶4(a)(iii)”); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a 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”); and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)(“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). It is clear from the timing of Respondent’s registration of the disputed domain name that Respondent opportunistically registered the disputed domain name, further establishing his bad faith.
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corporation utilizes its BING mark to provide consumers and businesses with online search, news, travel, shopping, and other information services. Complainant offers its trademark registrations for its BING mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,883,548 filed March 2, 2009; registered November 30, 2010).
Respondent Qiaojunxiang registered the <adbing.com> domain name on May 28, 2009 (the day the bing.com brand was publicly announced). The disputed domain name resolves to a website that sells products unrelated to Complainant’s information services.
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 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 claims it has established rights in its BING mark. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that a complainant may establish Policy ¶4(a)(i) rights in a mark by providing evidence of a trademark registration with the USPTO. Complainant provides its trademark registrations for its BING mark with the USPTO (e.g., Reg. No. 3,883,548 filed March 2, 2009; registered November 30, 2010). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels held that a complainant is not required to register a mark within the country that a respondent resides or operates. Therefore, this Panel finds it is immaterial Respondent resides or operates in China. In Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), and Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), the panels found that a complainant’s rights in a mark registered with the USPTO begin on the filing date. Consequently, the Panel concludes Complainant holds rights in its BING mark under Policy ¶4(a)(i), dating back to March 2, 2009.
Complainant alleges Respondent’s <adbing.com> domain name is confusingly similar to Complainant’s BING mark. In Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000), and Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001), the panels concluded that the addition of a generic term to a complainant’s mark fails to distinguish the disputed domain name from the mark. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panels found that the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶4(a)(i) analysis. Respondent adds the generic term “ad” to Complainant’s BING mark and the gTLD “.com.” In accordance with the findings of previous panels, this Panel concludes Respondent’s <adbing.com> domain name is confusingly similar to Complainant’s BING mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have any rights or legitimate interests in the <adbing.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. Out an abundance of caution, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c).
Complainant claims Respondent is not commonly known by the <adbing.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent is not commonly known by a disputed domain name when the respondent is not affiliated with the complainant, the WHOIS information is not similar to a disputed domain name, and the respondent fails to provide evidence that would prove that the respondent is commonly known by the disputed domain name. Complainant claims Respondent is not licensed to use Complainant’s BING mark and Respondent is not an authorized vendor, supplier, or distributor of Complainant’s information services. The WHOIS information lists the registrant of the <adbing.com> domain name as “Qiaojunxiang,” which the Panel determines is not similar to the disputed domain name. Respondent has not responded to this case and has not presented any evidence that would prove Respondent is commonly known by the <adbing.com> domain name. Based on the facts of the case and UDRP precedent, the Panel holds Respondent is not commonly known by the <adbing.com> domain name pursuant to Policy ¶4(c)(ii).
According to Complainant, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <adbing.com> domain name. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), and Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panels found that a respondent’s use of a disputed domain name to market and sell products that are unrelated to a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends the <adbing.com> domain name resolves to a website that contains hyperlinks to third-party websites that sell products that appear to be unrelated to Complainant’s Internet information services. This Panel holds Respondent has failed to make a bona fide offering of goods or services under Policy ¶4(c)(i) and a legitimate noncommercial or fair use of the <adbing.com> domain name pursuant to Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent registered and uses the <adbing.com> domain name in bad faith under Policy ¶4(b)(iv). In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), and T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panels found that a respondent registered and used a disputed domain name in bad faith when the respondent commercially benefited by providing hyperlinks to third-party websites that sold products unrelated to the complainant. Respondent’s <adbing.com> domain name resolves to a website that provides hyperlinks to third-parties unrelated to Complainant that sell products unrelated to Complainant’s Internet information services. Complainant claims Respondent commercially benefits from this use by receiving compensation from the unrelated third-parties through referral fees. Consequently, the Panel concludes Respondent registered and uses the <adbing.com> domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s registration of the <adbing.com> domain name is evidence of opportunistic bad faith. In Sota v. Waldron, D2001-0351 (WIPO June 18, 2001), and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panels found opportunistic bad faith when the respondent registered a disputed domain name immediately following an announcement relating to the mark found in the domain name. In this case, according to Complainant, Respondent registered the <adbing.com> domain name on the day Complainant made a worldwide press release regarding its BING services. Therefore, the Panel holds Respondent’s registration and use of the disputed domain name is evidence of opportunistic bad faith, which constitutes bad faith registration and use under Policy ¶4(a)(iii).
Complainant also contends Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the BING mark. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), the panel found that constructive notice generally does not suffice for a finding of bad faith registration and use. However, in Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panel held that a panel may nonetheless find that a respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. Based on all the evidence in the record, the Panel concludes Respondent had actual notice of Complainant’s rights in the BING mark, which is further evidence Respondent registered and uses the <adbing.com> domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) 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 <adbing.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 26, 2011
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