Microsoft Corporation v. sripaskaran ratansothy
Claim Number: FA1212001476225
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is sripaskaran ratansothy (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info>, registered with GoDaddy.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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant 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 December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2013 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@gbing.co, postmaster@gbing.net, postmaster@gbing.org, and postmaster@gbing.info. Also on December 19, 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 December 31, 2012.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends it is the owner of the BING mark which it uses in connection with online search, news, travel, shopping, and various other information services. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the BING mark (e.g., Reg. No. 3,883,548 filed Mar. 2, 2009; registered Nov. 30, 2010). The <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names are confusingly similar to the BING mark. Respondent merely adds the letter “g” and a generic top-level domain (“gTLD”) to each of the disputed domain names. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the BING mark or the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names. The WHOIS record for the disputed domain names list “Sripaskaran Ratansothy” as the domain name registrant. Respondent is not licensed to use the BING mark and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Respondent has never used the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names resolve to websites which host a competing search engine.
Complainant argues that Respondent is attempting to sell the disputed domain names for an amount in excess of Respondent’s out-of-pocket costs. When Respondent was contacted by Complainant about the <gbing.ca> domain name, Respondent invited Complainant to make an offer to purchase the domain name. Respondent alerted Complainant of Respondent’s ownership of the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names and offered to cancel the domain names to Complainant if Complainant would donate $20,000 to the Toronto Sick Kids Foundation. The disputed domain names are disruptive to Complainant’s business. Respondent uses the domain names to host a competing search engine which diverts Internet users from Complainant’s website to Respondent’s. Complainant further contends Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s BING mark. Respondent operation of a competing search engine and use of Complainant’s mark and similar typeface for the GBING phrase are meant to mislead and confuse the public. Respondent’s use of the domain name is intended to create an association with Complainant. Respondent has engaged in typosquatting. Respondent makes no substantive change to the BING mark other than the addition of a single letter, which simply arises from a common mistyping of a mark, and thus is easily mistaken for Complainant or mistyped when searching for Complainant. Respondent knew of Complainant’s rights in the BING mark when registering the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names. Respondent registered confusingly similar domain name and Respondent uses the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names to host a competing search engine.
B. Respondent
Respondent’s business name has recently changed from “Gbing” to “Gbioo.” The <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names are no longer useful to Respondent, and Respondent does not dispute Complainant’s allegations. Respondent agrees to transfer the disputed domain names in exchange for any reasonable expenses that Respondent has incurred. Payment can be made as a direct donation to the Toronto Sick Kids Foundation under the name “Sripaskaran.R” and “Microsoft Corporation.”
Complainant, having established the registered domain names <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info>, are identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interest in respect to the domain name; and the domain name has been registered and being used in bad faith and Respondent not opposing the allegations, the Panel finds that Complainant has established all elements required under the ICANN Policy, and the domain names shall be transferred to Complainant.
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 contends that it is the owner of the BING mark which it uses in connection with online search, news, travel, shopping, and various other information services. Complainant argues that it owns registrations with the USPTO for the BING mark (e.g., Reg. No. 3,883,548 filed Mar. 2, 2009; registered Nov. 30, 2010). Registration with the USPTO establishes rights in a mark, regardless of the location of the other party. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). The Panel finds that Complainant has rights in the BING mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names are confusingly similar to the BING mark. Complainant contends that Respondent merely adds the letter “g” and a gTLD to each of the disputed domain names. The addition of a single letter to a mark does not remove the domain names from the realm of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000). Panels have also held the addition of a gTLD to a mark is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). Respondent does not contest the allegation of confusing similarity. The Panel finds that Respondent’s <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names are confusingly similar to Complainant’s BING mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant states that Respondent is not commonly known by the BING mark or the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names. Complainant notes that the WHOIS record for the disputed domain names list “Sripaskaran Ratansothy” as the domain name registrant. Additionally, Complainant contends that Respondent is not licensed to use the BING mark and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Panels have found that evidence on the record such as the WHOIS record is illustrative of whether the respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006. Respondent does not contest these allegations made by Complainant, and states it has changed its business name to Gbioo. The Panel finds that Respondent is not commonly known by the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names under Policy ¶ 4(c)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent is attempting to sell the disputed domain names for an amount in excess of Respondent’s out-of-pocket costs. Complainant states that when Respondent was contacted by Complainant about the <gbing.ca> domain name, Respondent invited Complainant to make an offer to purchase the domain name. Respondent then alerted Complainant of Respondent’s ownership of the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names, Complainant claims, and offered to cancel the domain names if Complainant would donate $20,000 to the Toronto Sick Kids Foundation. In World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), the panel found that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs. The Panel finds that Respondent registered and is using the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names in bad faith under Policy ¶ 4(b)(i).
Complainant contends that the disputed domain names are disruptive to Complainant’s business. Complainant notes that Respondent operates a competing search engine on the disputed domain names. Complainant alleges that Respondent uses the domain names to host a competing search engine which diverts Internet users from Complainant’s website to Respondent’s. Panels have found this use to be disruptive. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’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).”). Respondent does not dispute their claim. The Panel finds that Respondent registered and uses the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s BING mark. Complainant contends that Respondent’s operation of a competing search engine and use of Complainant’s mark and similar typeface for the GBING phrase are meant to mislead and confuse the public. According to Complainant, Respondent’s use of the domain name is intended to create an association with Complainant. Respondent registered and uses the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant argues that Respondent has engaged in typosquatting. Complainant asserts that Respondent makes no substantive change to the BING mark other than the addition of a single letter, which simply arises from a common mistyping of a mark, and thus is easily mistaken for Complainant or mistyped when searching for Complainant. In Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), the panel held that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form. The Panel finds that Respondent’s registration and use of the typosquatted BING mark in the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names is evidence of bad faith under Policy ¶ 4(a)(iii). Respondent does not contest the allegation of bad faith under Policy ¶ 4(a)(iii), thus the Panel finds bad faith is established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gbing.co>, <gbing.net>, <gbing.org>, and <gbing.info> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: January 18, 2013
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