Microsoft Corporation v. Nguyen Linh
Claim Number: FA1109001409811
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Nguyen Linh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <binggames.org>, registered with GoDaddy.com, Inc.
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.
Roberto Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2011; the National Arbitration Forum received payment on September 30, 2011.
On October 3, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <binggames.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@binggames.org. Also on October 4, 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.
A timely Response was received and determined to be complete on October 25, 2011.
On November 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
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 “games” and the generic top-level domain “.org.” These changes are not sufficient to avoid a likelihood of confusion.
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 Nguyen Linh. Respondent is not commonly known by Complainant’s BING trademark and 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. The disputed domain resolves to a web site which displays a variety of games that a user can play, several of which require the user to insert an email address and password which is a potential phishing risk. Additionally, the site contains various advertisements. Presumably, Respondent receives compensation for directing consumers to these 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).
Additionally, the landing page for the disputed domain name displays Complainant’s BING trademark in Complainant’s exact font, stating “Find us on Facebook.” The resulting Facebook page, however, is not Complainant’s Facebook page but rather is one that Respondent has created, presumably to confuse consumers. This is calculated and likely to cause confusion, and is not a legitimate use. 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).
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 throughout the world. Given that Respondent registered the domain name in 2011 and duplicates Complainant’s actual BING mark on its website, it is 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 “games” clearly relates to some of Complainant’s BING services, namely the dissemination of games through Complainant’s BING site. 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). 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. Furthermore, by incorporating Complainant’s famous trademark into the disputed domain, and using Complainant’s distinctive logo at the corresponding web site, Respondent creates the false impression of a site that originates with or is sponsored by Complainant.
B. Respondent
In its Response, Respondent contends as follows:
<binggames.org> is a private blog that collects flash games. In this site, users can freely play the selected games. The domain name binggames.org is used with the purpose to provide flash games lovers more choices when they want to play games. <binggames.com> [sic] does not try to falsify or create confusion with the services of <bing.com>. In order not to confuse users, Respondent is placing an announcement on the main page of Binggames.org for all of the users.
The domain name <binggames.org> is legal and has no commercial purpose to deceive users or to overshadow <bing.com>. Therefore, the claim of Microsoft to take this domain name is not logical. Respondent opposes this action of Microsoft.
Founded in 1975, Microsoft is a worldwide producer and provider of software and other products and services in the field of information technology. Among other things, Microsoft provides consumers and businesses with online search, news, travel, shopping and other information services under the trademark BING. According to a news bulletin of the press department of Complainant dated May 28, 2009, on that date Complainant unveiled Bing, a new “decision engine” also described as “a new and more powerful kind of search service”.
Complainant owns numerous trademark registrations for the mark BING in the United States of America and elsewhere. Almost all of the applications for the trademark registrations were made in March 2009. All of the international registrations for this mark were granted in 2009.
Around March 2009 press articles began announcing Microsoft’s plans to re-brand its Live search service with the BING mark.
The disputed domain name was registered on January 18, 2011.
On November 15, 2011, the website to which the disputed domain name resolves, is displaying numerous links to online games. The web pages of the site display ads specially designed to appear in the language of the Internet user actually connected with the 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."
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 has evidenced that it has trademark rights in the BING mark. Since the disputed domain name incorporates the BING mark in its entirety, adding only the generic term “games” and the “.org” generic top-level domain (“gTLD”), the Panel finds that the domain name is confusingly similar to Complainant's BING mark. Adding a generic term and a gTLD to a complainant’s mark is insufficient to distinguish the domain name at issue from the incorporated 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)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Thus, the first element of the Policy is met.
Complainant contends that Respondent is not commonly known by Complainant’s BING trademark, that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, and that Respondent is not commonly known by the BING mark. Complainant adds that Respondent is not affiliated with Complainant and is not licensed by Complainant to use the BING trademark, and that it is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Further, says Complainant, the disputed domain resolves to a web site displaying a variety of games that a user can play, several of which require the user to insert an email address and password, which is a potential phishing risk. Complainant adds that the website contains various advertisements and that, presumably, Respondent receives compensation for directing consumers to these third-party sites. Complainant contends 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). Moreover, the landing page for the disputed domain name displays Complainant’s BING mark in Complainant’s exact font, stating “Find us on Facebook.” The resulting Facebook page, however, is not Complainant’s Facebook page but one that Respondent has created, presumably to confuse consumers.
Taken together, these contentions and supporting evidence are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel believes that Respondent's contentions in the Response that the disputed domain name is used with the purpose to provide flash games and that Respondent is not trying create confusion with the services of Complainant’s <bing.com> website are misleading and unconvincing. The website at which the disputed domain name resolves, beside providing users with online games to play, is displaying advertising from numerous sources, from which Respondent presumably is obtaining monies via a pay-per-click or click-through system. All this is clearly made possible by the fact that Internet users, presumably looking for games provided by Complainant through its search engine protected by the BING mark, are being diverted to Respondent’s website at the disputed domain name. In other words, Respondent, unauthorized by Complainant, is obtaining a profit from the confusion it creates among Internet users looking for games provided by Complainant's famous Bing browser. This behavior clearly is 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
In its Response Respondent states that in order not to confuse users, it is placing an announcement on the main page of the <binggames.org> website. During its independent visit to Respondent's website at the disputed domain name conducted on November 15, 2011 the Panel was unable to find any such announcement or disclaimer, but even if a disclaimer had been posted by Respondent, it would not have altered the fact that initial confusion would already have occurred by the time where the Internet user reached the disclaimer, so that the use of the disputed domain name would still be illegitimate. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
The Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has shown that it had registered its BING mark in many countries by 2009, before the disputed domain name was registered. Complainant also submitted press clippings showing that numerous press articles were announcing an imminent re-branding of the Live search service since as early as March 2009. This fact, and the circumstance that the projects and activities of Microsoft are likely to reach the public fast due to the fame and renown of Complainant, lead the Panel to infer that Respondent was most likely aware of Complainant's mark BING when it registered the disputed domain name. Moreover, Respondent has failed to furnish any explanation for having chosen precisely “Bing” as the first and dominant portion of the disputed domain name. Additionally, one of the services the Bing search engine can provide is listing games. The Panel cannot but conclude that Respondent had Complainant's BING mark in mind when it registered the disputed domain name; i. e. the disputed domain name was registered in bad faith.
The disputed domain name resolves to a website containing numerous links to flash games, a kind of online games, which visitors can play. The web pages of the <binggames.org> website also display ads designed to appear in the language of the Internet user actually connected with the website. Presumably, Respondent obtains pay-per-click revenue by causing or allowing ads to appear. It is obvious that it is the fame and renown of Complainant’s Bing search engine the main factor allowing Respondent to reap monies by causing confusion among Internet users looking for Complainant's search engine. In other words, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
The Panel concludes that the third element of the Policy is also 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 <binggames.org> domain name be TRANSFERRED from Respondent to Complainant.
Roberto Bianchi, Panelist
Dated: November 15, 2011
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