Microsoft Corporation v. Nguyen Linh
Claim Number: FA1207001455302
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 NAMES
The domain names at issue are <bing-games.com> and <bing-games.org>, registered with Godaddy.Com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 26, 2012; the National Arbitration Forum received payment on July 26, 2012.
On July 30, 2012, Godaddy.Com, LLC confirmed by e-mail to the National Arbi-tration Forum that the <bing-games.com> and <bing-games.org> domain names are registered with Godaddy.Com, LLC and that Respondent is the current regis-trant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.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 July 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@bing-games.com and postmaster@bing-games.org. Also on July 31, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide leader in the development and marketing of com-puter software and related services.
Complainant provides consumers and businesses with online search, news, travel, shopping, games and other services under the service mark BING.
Complainant has registered the BING service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,883,548, registered November 30, 2010).
Respondent registered the disputed domain names on or after October 24, 2011.
Respondent’s <bing-games.com> and <bing-games.org> domain names are confusingly similar to Complainant’s BING mark.
Respondent has not been commonly known by the disputed domain names.
Respondent is not affiliated with Complainant in any way, and Respondent is not licensed by Complainant to use Complainant’s BING service mark.
Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the disputed domain names.
Respondent resolves the <bing-games.com> domain name to a website offering paid advertisements and a variety of online games operating in direct competition with Complainant’s own games department.
Respondent resolves the <bing-games.org> domain name to a parked website that hosts links to third-party websites.
Respondent’s employment of the contested domain names disrupts Complain-ant’s business by creating the false impression of a website that originates with or is sponsored by Complainant.
Respondent was familiar with Complainant’s BING trademark at the time of regis-tration of the domain names, and intentionally adopted domain names incorpora-ting the BING mark in order to create an association with Complainant and its products and services.
Respondent has been found to have acted in bad faith in other UDRP decisions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Vert-ical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the BING service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, 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).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent re-sides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not mat-ter for purposes of the Policy whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in a mark in some jurisdiction).
Turning then to the central question arising under this head of the Policy, we conclude from our review of the record that Respondent’s <bing-games.com> and <bing-games.org> domain names are confusingly similar to Complainant’s BING service mark. Both domain names include the entire BING service mark, a hyphen, the descriptive term “games,” which relates to an aspect of Complain-ant’s business, and a generic top-level domain (“gTLD”). These alterations of the mark, made in creating the domain names, do not avoid a finding of confusing similarity under the standards of the Policy. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005):
[T]he Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it has such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not affiliated with Complainant in any way, that Respondent is not licensed by Complainant to use Complainant’s BING service mark, and that Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services. Moreover, the pertinent WHOIS information identifies the registrants of the disputed domain names only as “Nguyen Linh,” which does not resemble the contested domain names. On this record, we conclude that Re-spondent has not been commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legit-imate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We next observe that Complainant also contends, without objection from Re-spondent, that Respondent is not making a bona fide offering of goods or ser-vices or a legitimate noncommercial or fair use of the disputed domain names, in that Respondent resolves the <bing-games.com> domain name to a website offering paid advertisements and a variety of online games in direct competition with Complainant’s own games department. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a fin-ancial services website which competed with the business of a complainant was not a bona fide offering of goods or services within the contemplation of the Policy).
Similarly, Complainant alleges, again without objection from Respondent, that Respondent resolves the <bing-games.org> domain name to a website that is otherwise inactive, but that hosts links to third-party websites. This too is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used the domain name to operate a website featuring links to the websites of other parties offering goods and services unrelated to the business of a UDRP complainant).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are satisfied from our examination of the record that Respondent has been found to have acted in bad faith in the registration and use of domain names in two prior UDRP decisions. See Microsoft Corp. v. Nguyen Linh, FA 1409811 (Nat. Arb. Forum Nov. 15, 2011); see also Microsoft Corp. v. Nguyen Linh, FA 1409813 (Nat. Arb. Forum Nov. 1, 2011). This pattern of behavior by Respond-ent stands as evidence of bad faith in the registration and use of the instant domain names under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding that prior UDRP pro-ceedings were evidence of a pattern of bad faith domain name registrations); see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009):
These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).
We are also persuaded from the evidence that Respondent’s employment of the <bing-games.com> domain name to resolve to a website featuring paid advert-isements and online games that compete with those offered by Complainant dis-rupts Complainant’s business. This demonstrates that Respondent both regis-tered and uses that domain name in bad faith under Policy ¶ 4(b)(iii). See Dat-ingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Finally, it appears from the evidence that Respondent knew of Complainant’s BING service mark at the time of registration of the contested domain names. This independently indicates bad faith registration and use of the domain names under Policy ¶ 4(a)(iii). SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a UDRP respondent was "well-aware of” a complainant's YAHOO! mark at the time of domain name registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bing-games.com> and <bing-games.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 7, 2012
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