Friday, May 25, 2012

Microsoft Corporation v. Patrick McAuliffe
Claim Number: FA0912001297333

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.TexasUSA. Respondent is Patrick McAuliffe (“Respondent”)Ireland.

The domain names at issue are <wwwbing.com><wwbing.com>, <wwwwbing.com>, <bingf.com><b8ng.com><b9ng.com><binfg.com>, and <binhg.com>, registered with Register Spa.

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.

Debrett G. Lyons as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2009.

On December 4, 2009Register Spa confirmed by e-mail to the National Arbitration Forum that the <wwwbing.com><wwbing.com>,<wwwwbing.com>, <bingf.com><b8ng.com><b9ng.com><binfg.com>, and <binhg.com> domain names are registered with Register Spaand that the Respondent is the current registrant of the name.  Register Spa has verified that Respondent is bound by the Register Spa registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 24, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwbing.com,postmaster@wwbing.com, postmaster@wwwwbing.com, postmaster@bingf.com, postmaster@b8ng.com, postmaster@b9ng.com,postmaster@binfg.com, and postmaster@binhg.com by e-mail.

Respondent's Response was received in electronic copy on December 14, 2009.  However, since no hard copy reached the National Arbitration Forum by the deadline, the Response is considered deficient under ICANN Rule 5.

On December 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A.     Complainant

Complainant asserts trademark rights and alleges that the disputed domain names are identical or confusingly similar to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

The detail of the Complaint, so far as relevant, is found in the Discussion which follows.

B. Respondent

As noted, the Response was non-compliant with ICANN Rule 5.  The Panel nonetheless has discretion whether to admit the Response or not.[i]

The Response consists of a relatively short email, without attachments, sent to the National Arbitration Forum on December 12, 2009.  On December 14, 2009 the Forum wrote to Respondent reminding him that he had until December 24, 2009 to submit the hard copy of the Response.  That communication went on to explain to Respondent that “if you reply to this email, copying the Complainant, confirming that your Response is complete, the Forum will continue with the administration of this proceeding and appoint a Panel within 5 days.  The document will be included in the file, and will be treated as a non-compliant Response.”  On December 14, 2009 Respondent replied to the Forum confirming that the Response was complete.

Notwithstanding a party’s obligation to properly inform itself of the Rules to the UDRP, it seems to this Panel that there is some chance that Respondent may have not properly understood the Forum’s December 24, 2009 message.  Making allowance for that possibility and taking account of the brief nature of the Response and the fact that it does rely on any documentary evidence which should properly be available to Complainant in hard copy form, the Panel has decided to admit the Response.

For simplicity’s sake, the Panel has set out below the Response in full.

 Microsoft launched bing.com on 28th May 2009.  This was a full two months AFTER I registered wwwbing.com on on 26th march 2009. I was at that time unaware of wwwbing.com being similar to the search engine bing.com.

I am using the domain wwwbing.com to promote a children's book called
"Walter Will Wawrinka Bing". It involves a troll who has supernatural
and magical powers in modern Scandinavia. It will be published on the
5th April 2010 in Ireland. I have every right to register a domain name to promote a book.

I was not familiar with Complainant's BING trademark at the time of
registration of the domain name wwwbing.com. The site is currently

My email address is pmcauliffe2003@yahoo.co.uk which can be officially
seen in the registrant details for wwwbing.com or on wwwbing.com or at
my registrar Namesco Ltd United Kingdom.  I do not own the email address patrick.mcauliffe@gmail.com.  I never sent an email to Bill Gates offering to sell the domain.

1.      Complainant was founded in 1975 and has since manufactured, marketed and sold computer software and offered related products and services.  Its business is enormous.[ii]

2.      BING is the name Complainant decided upon in 2009 as the name to replace “Live Search” for its internet search engine.

3.      Complainant made that search engine publicly available through <www.bing.com> on June 1, 2009.

4.      Complainant owns numerous trademark applications and registrations throughout the world for BING.

5.      Respondent registered the disputed domain names in the following sequence:

      March 10, 2009           -           <b8ng.com><b9ng.com>
      March 26, 2009           -           <wwwbing.com>
      April 6, 2009                -           <wwbing.com><wwwwbing.com><binfg.com>
      May 11, 2009              -           <bingf.com><binhg.com> 

6.      There is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2)   the 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.

Identical and/or Confusingly Similar

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trade mark and the domain name are identical or confusingly similar.

Complainant has rights in the trademark BING by virtue of its various trademark registrations.[iii] 

The remaining enquiry is whether the domain names are identical or confusingly similar to the trademark.  To reiterate, the comparison is BING with<wwwbing.com><wwbing.com><wwwwbing.com><bingf.com><b8ng.com><b9ng.com>,
<binfg.com>, and <binhg.com>.

In making that comparison it is broadly accepted that the gTLD, “.com” can be disregarded.[iv]  Complainant contends that the disputed domain names are either legally identical or confusingly similar to its trademark because, once the gTLD is subtracted, the domain names differ from its trademark only in minor misspellings of the trademark or by the addition of other non-distinctive matter such as “www.”[v]

The Panel agrees with Complainant’s submissions and finds all of the disputed domain names at least confusingly similar to the trademark BING.

Respondent’s submissions have no bearing on these findings.  For the purposes of Policy ¶ 4(a)(i) it is inconsequential that trademark rights postdate the registration date of a disputed domain name.[vi] 

The Panel finds that Complainant has established the first limb of the Policy.

Rights or Legitimate Interests

Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name.  Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.[vii] 

The Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):

(i)   before any notice to you of the dispute, your 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)  you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.

The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain names.  There is no evidence that Respondent has any trademark rights.  Complainant has stated there to be no relationship between it and Respondent. The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent attempts to show a legitimate interest because he is using the domain wwwbing.com to promote a children's book called "Walter Will Wawrinka Bing" which will be published in 2010.

There is no evidence of that book or of a publishing contract for it, or an explanation as why Respondent should have registered another seven domain names in addition to <wwwbing.com>.  In the absence of such evidence or explanation, and in view of the further evidence from Complaint showing that Respondent also registered permutations of the other mooted names contemplated by Complainant to replace “Live Search,”[viii] the Panel can give Respondent’s submission on legitimate interest little credibility.  Panel finds that Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services, nor for a legitimate noncommercial or fair use.

The Panel finds that Complainant has established the second limb of the Policy.

Registration and Use in Bad Faith

Policy ¶ 4(b) sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith.  They are:

(i)         circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii)        you have 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 you have engaged in a pattern of such conduct; or

(iii)       you have registered the domain name primarily for the purpose of disrupting the business of a competitor;  or

(iv)       by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

What is noteworthy about Policy ¶ 4(b)(i)-(iv) is that they are all cases of both registration and use in bad faith.  Complainant has not relied on any one or more of those grounds but it is logical to first consider their possible application to the facts.

In spite of Respondent’s denial, the evidence is clear that on June 8, 2009 Respondent sent an email to Complainant with a view to sale of the domain name <wwwbing.com> to Complainant.  Although no sum was mentioned in that email, Respondent wrote that “there is a recession in Ireland and my wife and daughters could do with a bit of money” from which the Panel can conclude that Respondent hoped to sell the domain name for consideration in excess of his out of pocket registration costs.

The evidence shows that the press began speculating as to Complainant’s likely adoption of the BING trademark as early as August 1, 2008. Trademark applications were filed for BING in a number of jurisdictions soon after.  The Panel finds it more likely than not that by the timeRespondent registered the domain name <wwwbing.com> in March 2009, Complainant’s trademark would have been known to a significant section of the public.

In those circumstances the Panel can conclude that it is more likely than not that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant.  The Panel therefore finds that the registration of <wwwbing.com> falls squarely within the circumstances envisaged by Policy ¶ 4(b)(i) and so finds that the domain name was registered and used in bad faith.

Similar reasoning applies to the other disputed domain names.  They have already been found to be confusingly similar to Complainant’s trademark. Respondent has not shown any bona fide use of them and Respondent’s submission that it has a legitimate interest in the names has been rejected by the Panel.  It follows that it is more likely than not that Respondent registered all of the disputed domain names with the primary intention described by Policy ¶ 4(b)(i).

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwbing.com><wwbing.com>, <wwwwbing.com>, <bingf.com><b8ng.com><b9ng.com>,<binfg.com>, and <binhg.com> domain names be TRANSFERRED from Respondent to Complainant.

Debrett G. Lyons, Panelist
Dated: December 29, 2009

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[i] See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see alsoJ.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.”).

[ii] As recognized in numerous earlier UDRP proceedings.  See, e.g.Microsoft Corporation v. Phayze Inc., D2003-0750 (WIPO Nov. 13, 2003).

[iii] The Policy does not distinguish between registered and unregistered trademark rights (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)), however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003).

[iv] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.).

[v]  See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding that the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); for the same proposition, see also Hewlett-Packard Company v. World Wide Web Home Player, FA 96267 (Nat. Arb. Forum Jan. 8, 2001); Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002); Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000); see also State Farm Mutual Automobile Insurance Company v. Eric Gallite, FA 1176737 (Nat. Arb. Forum May 20, 2008) (“Adding numerals also does very little to eliminate the possibility of confusion between the mark and a domain name incorporating the mark”); see also Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).

[vi] See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (holding that “[A]lthough the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).  In any event, a number of Complainant’s trademark applications for BING, such as Hong Kong Reg. No. 301,295,695 filed March 2, 2009, predated the earliest of Respondent’s domain names.  

[vii] See Do The Hustle, LLC vTropic Web, D2000‑0624 (WIPO Aug. 23, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

[viii] The evidence shows that from the beginning of August 2008 news reports broke that Microsoft was going to be rebranding its search engine from Live Search to another name, possibilities being BING, KUMO and HOOK.  The evidence shows that some media commentators regarded KUMO as the more likely successor to “Live Search.”  The evidence shows that Respondent registered <kkumo.co.uk> and <kum0.co.uk> on March 9, 2009 and <kuumo.co.uk> on March 11, 2009.  Moreover, Respondent registered other extension including BING, such as <bingg.co.uk> on March 12, 2009 and <wwwbing.co.uk> on April 6, 2009.

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