Microsoft Corporation v. Abdullah Ali
Claim Number: FA1201001423605
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Abdullah Ali (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bingcars.net>, <bingauto.net>, and <binghomes.net>, 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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received payment on January 9, 2012.
On January 10, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <bingcars.net>, <bingauto.net>, and <binghomes.net> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. 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 January 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2012 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@bingcars.net, postmaster@bingauto.net, and postmaster@binghomes.net. Also on January 11, 2012, the 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.
A timely Response was received and determined to be complete on January 30, 2012.
On February 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on the Complainant’s use and ownership of the mark BING in various jurisdictions including the United States of America and the country members of the European Community since at least 2009, to identify online search, news, travel, shopping and other information services.
Complainant’s main contentions are as follows:
1. Complainant introduced the mark BING to the press and public on May 28, 2009, which became famous and acquired secondary meaning through unprecedented global press coverage.
2. Complainant has been granted with a number of registrations of the mark BING around the world. The filing dates for these registrations predate the registration of the disputed domain names.
3. Complainant also owns the domain name <bing.com>, whose registration dates back to January 29, 1996.
4. The disputed domain names incorporate the mark BING adding only generic or descriptive terms such as “auto”, “cars” and “homes” and the generic top-level-domain .net, which are not sufficient to avoid a likelihood of confusion with the Complainant’s mark.
5. Respondent lacks of rights or legitimate interests in the disputed domain names: He is not commonly known by the mark BING, he has not used the domains names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent is not affiliated with Complainant in any way: Respondent has not been authorized by Complainant to use the mark BING, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.
6. The disputed domain names resolve to parked websites containing links to third parties websites, which is not a use in connection to a bona fide offering of goods or services. Complainant presumes that Respondent receives compensation for directing third-party sites. Respondent has also offered each of the disputed domain names for sale to the public for amounts ranging from USD$1,900 to USD$4,000 each.
7. Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights in its well-known mark is evidence of bad faith registration and use.
B. Respondent
1. Respondent contends that he did not use any logo or copyrighted material owned by Complainant in his websites.
2. The word BING has different meanings in different languages and Complainant intends to monopolize them all.
3. The disputed domain names were available for registration and he bought them with his income.
1. Complainant owns the mark BING in the United States of America, the European Community, and other jurisdictions since before the disputed domain names were registered by Respondent. Complainant identifies a variety of online services with the mark BING.
2. Respondent was aware of the Complainant’s rights in the mark BING, yet he incorporated it in the disputed domain names. Thus, Respondent used the mark BING to create a likelihood of confusion aimed to divert consumers to his websites.
3. Respondent profited from this likelihood of confusion since he received pay-per-click fees every time a consumer clicked each of the sponsored links displayed in his websites.
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."
Likewise, paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Panel will make special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three (3) elements to obtain an order that a domain name be cancelled or transferred:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the sole panelist will determine whether or not the Disputed Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights. Secondly (Section B), the sole Panelist will verify if Respondent has any rights or legitimate interests in respect of the Disputed Domain Names; and thirdly (Section C), the sole Panelist will establish whether or not the Disputed Domain Names have been registered and are being used in bad faith by Respondent.
Complainant contends to be the owner of the mark BING in the United States of America and the European Community, among other jurisdictions, which has been continuously used since 2009 to identify online search services and other online related services.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the mark BING. Exhibit E to the Complaint includes:
· Copies of the registration certificates Nos. 3,975,040 and 3,883,548 granted by the United States Patent and Trademark Office (USPTO) for the mark BING in international classes 9[2], 35[3], 38[4], 39[5], 41[6] and 42[7]. According to these documents, Complainant has used the mark BING in the US commerce since May 28, 2009.
· A printout of the ROMARIN[8]‘s database of the World Intellectual Property Organization (WIPO), showing that the mark BING has been registered under the Madrid International System in the European Community, Russia, Turkey, Australia, Norway, etc., to identify services of the international class 39[9]. These registrations date back to March, 2, 2009.
· A listing of mark registrations granted in other jurisdictions such as Argentina, New Zealand, Panama, Peru, South Africa, Canada, Colombia, etc. The sole Panelist simply confirmed from this list that Complainant owns registrations for the mark BING in international classes 35[10], 38[11] and 42[12] in Colombia since October 26, 2009.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the mark and the exclusive right to use it in connection with the stated goods and services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[13]
Thus, Complainant established its rights in the mark BING.
Therefore, the sole Panelist concludes that Complainant has demonstrated registered and common law rights in the mark BING for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
Complainant alleges that the disputed domain names incorporate the mark BING, adding only the generic or descriptive terms “cars”, “auto” and “homes” and the generic top-level domain name “.net”. According to the Complainant, these changes are not sufficient to avoid a likelihood of confusion with the mark BING.
Before establishing whether or not the domain names <bingauto.net>, <bingcars.net> and <binghomes.net> are confusingly similar to the Complainant’s mark BING, the sole Panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, ”.co” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.
This conclusion applies also to the .net gTLD.
In addition, the sole Panelist agrees with the Complainant on the conclusion that including the generic terms “auto”, “cars” and “homes” at the end of the second-level domain names is not sufficient to make the disputed domain names different from the BING mark. Ultimately, given the well-known character of the mark BING, Internet users will certainly associate the disputed domain names with the mark BING and Complainant, and will completely disregard the generic terms. See Regions Asset Co. v. Domain Manager, FA 1420135 (Nat. Arb. Forum Jan. 30, 2012) (concluding that “these additions fail to adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i)”).
The Panel deduces the well-known character of the mark BING from the following: i) the worldwide press for the mark BING beginning in August of 2008, included as Exhibit D to the Complaint; ii) the fact that Complainant is an enormous business with presence in most countries around the world, which is not strange to this Panel; and iii) a quick search conducted by the sole Panelist in the search engine GOOGLE of the words “BING + MICROSOFT”, which showed over 400,000,000 results making evident that to date global consumers recognize the mark BING and the services identified with it, and also that the mark BING serves as a true badge of origin. The famous or well-known character of a mark must be analyzed within a specific time and territory. According to the evidence submitted by Complainant and the evidence found ex officio by the sole Panelist, the mark BING was well-known in 2010 and 2011 (the years when the disputed domain names were registered) in the United Kingdom (where Respondent resides according to the Whois information included as Exhibit A to the Complaint).
Complainant contends that the mark BING has acquired secondary meaning since the launch date of its search engine in May, 2009, yet the sole Panelist differs. Such contention entails accepting that the mark BING was not inherently distinctive in the first place. However, the Panel believes that the mark BING was inherently distinctive since it is neither generic nor descriptive of the online search and related services it identifies[14]. Therefore, the Panel concludes that with time this mark has acquired recognition and a well-known character rather than a secondary meaning.
Respondent claims that the word BING has a number of meanings in different languages, and also that Complainant intends to monopolize them all. The Panel disbelieves the Respondent’s true interest in the meaning of the word BING in any language. Actually, this Panel is convinced that Respondent was interested in the word BING only for it being a well-known mark associated with Complainant. Since the disputed domain names are made of words belonging to the English language (BING plus “cars”, “auto” and “homes), and the links displayed in Respondent’s websites are also in English (as shown in Exhibits G, H and I to the Complaint), this Panel assumes that the Respondent’s targeted Internet users were English speakers familiarized with the mark BING. That makes a huge targeted audience.
In consequence, as per this reasoning, the sole Panelist finds that, in the present case, the disputed domain names are confusingly similar to the Complainant’s mark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element (“Respondent has no legitimate interests in respect of the domain name”) of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In the Julian Barnes v. Old Barn Studios Limited, D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.
Therefore, a Complainant is required to make a prima facie case that the Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain names <bingauto.net>, <bingcars.net> and <binghomes.net>: Respondent has no affiliation with Complainant; Respondent has not been authorized by Complainant to use the mark BING in any manner; Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent is not commonly known by Complainant’s BING mark.
The sole Panelist accepts this assertion as a prima facie case made by Complainant that shifts the burden of proof to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that the disputed domain names were available for registration when he bought them.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the domain names <bingauto.net>, <binghomes.net> and <bingcars.net>. Simply stating that the domain names were available for registration is not evidence of Respondent’s rights or legitimate interest in them. On the contrary, this assertion provides a glimpse of Respondent’s prior search for unregistered domain names comprising the mark BING, and his intention of taking advantage of the opportunity to make them his own.
Respondent did not prove that before receiving the written notice of the Complaint he was using or preparing a website to use the domain names in connection with a bona fide offering of goods.
The sole Panelist conducted searches ex officio in the online databases of the Office of Harmonization for the Internal Market (OHIM) and the United States Trademark and Patent Office (USPTO) to confirm that Respondent is not the owner of the marks bingauto, bingcars and binghomes. The sole Panelist also conducted searches ex officio in the search engines Google and BING (owned by Complainant) to confirm that Respondent is not commonly known by the domain names bingauto, bingcars and/or binghomes.
Respondent made a commercial use of the disputed domain names rather than a legitimate noncommercial or fair use. The websites to which the disputed domain names reverted to, as shown in Exhibits G, H and I to the Complaint, listed a number of links to third-party websites. The Panel concludes that Respondent earned click-through fees for diverting Internet users to third-party websites, which cannot be deemed as a bona fide offering of goods or services or a legitimate commercial non use. Prior Panels have reached the same conclusion. See Meyerson v. Speedy Web, FA 960409 (WIPO May 25, 2007) (holding that, where Respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)).
Therefore, the second requirement of paragraph 4 (b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the sole Panelist to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.
Complainant claims that at the time of registration of the disputed domain names the mark BING was familiar to countless consumers around the world, including the United Kingdom where Respondent resides. Therefore, Respondent registered the disputed domain names with knowledge of Complainant’s rights in its mark BING.
The sole Panelist agrees with Complainant on the fact that Respondent was aware of the mark BING’s existence when he registered the disputed domain names given the mark’s well-known character in the United Kingdom in the years 2010 and 2011, as mentioned in Section A.
This Panel deems that the mere fact of incorporating a third-party’s well-known mark in a domain name is registration in bad faith. See Aktiebolaget Electrolux v. Rodríguez, D2011-1311 (WIPO Sept. 27, 2011) (holding that ”[t]he selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”).
Complainant also asserts that Respondent used the disputed domain names in connection with websites that offer links to third-party websites, for which Respondent receives referral or click through fees.
This Panel believes that pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv).
Thus, including the mark BING in the domain names <bingauto.com>, <binghomes.net> and <bingcars.net> was not a random choice but a premeditated decision: Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. The more diverted Internet users he could attract, the more profit he would make.
Complainant also asserts that Respondent acquired the disputed domain names with the purpose of making money through pay-per-click fees and also by offering them for sale. Exhibits G, H and I show that the three disputed domain names were on sale for amounts that exceed the Respondent’s out-of-pocket costs related to their registration. This, once again, is not bad faith use per se. The Panel believes that buying domain names to sell them afterwards is one of the many lawful businesses that one can do in the digital world. However, registering a domain name comprising a well-known mark owned by a third party and afterwards offering it for sale for an excessive price, only shows that the domain name’s value is given by the incorporation of said well-known mark. Therefore, an offer for sale in this context is bad faith use as per Policy 4 (b).
Respondent limited himself to claim that he did not use any logo or copyrighted material owned by Complainant in his websites. It was not necessary: Using Complainant’s mark BING in the disputed domain names was enough grounds to create a likelihood of confusion aimed to divert consumers to his websites.
The three elements of the Policy 4 (a) (iii) are satisfied in the present case in respect to Respondent of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bingcars.net>, <bingauto.net>, and <binghomes.net> domain names be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: February 15, 2012
[1] See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)).
[2] The listing of products in international class 9 includes: Computer search engine software; graphical user interface software, namely, toolbar software for use with search engine software and websites.
[3] The listing of services in international class 35 includes: Dissemination and advertising for others via Internet; providing consumer product information via the Internet; advertising and directory services, namely, promoting the goods and services of others by providing a website featuring links to the websites of others; providing online directory services featuring business and personal directory information; providing an Internet website featuring news and information in the fields of national and international politics and business.
[4] The listing of services in international class 38 includes: Telecommunication services, namely, receipt and delivery of information, messages, documents, images and other data by electronic transmission; streaming of audio and video on the Internet.
[5] The listing of services in international class 39 includes: providing a website and website links to geographic information, map, images, and trip routing.
[6] The listing of services in international class 41 includes: Education, namely, providing training and tutorials in the field of computer searching and online advertising; entertainment services, in the nature of providing online news and information in the fields of entertainment, education, pop culture, cultural activities and exhibitions, sports, and other non-business and non-commercial fields, namely, games, music, literature, the arts, television, films and performance art.
[7] The listing of services in international class 42 includes: Computer services, namely, providing search engines for obtaining data on a global computer network.
[8] ROMARIN stands out for “Read-Only-Memory of Madrid Active Registry Information”. The ROMARIN database contains information regarding all international marks recorded under the Madrid System, that are currently in force in the International Register or have expired within the past six months.
[9] Providing geographic information for travel, geographical map images for travel, and trip routing information for travel; all the aforesaid provided via an Internet web site and web site links.
[10] Registration certificate No. 390405 granted on October 26, 2009. The services listed are: Dissemination and advertising for others via Internet; providing consumer product information via the Internet; advertising and directory services, namely, promoting the goods and services of others by providing a website featuring links to the websites of others.
[11] Registration Certificate No. 390407 granted on October 26, 2009. The services listed are: Telecommunication services, namely, receipt and delivery of information, messages, documents, images and other data by electronic transmission.
[12] Registration Certificate No. 388741 granted on September 22, 2009. The services listed are: Computer services, namely, providing search engines for obtaining data on a global computer network.
[13] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[14] According to the Webster’s Online Dictionary, the word BING means “a heap or pile”. Webster’s Online Dictionary, http://www.websters-online-dictionary.org/definitions/bing.
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