Microsoft Wins Domain Name Arbitration

A single-member Panel at the National Arbitration Forum decided the domain dispute Microsoft Corporation v. TN Chen, FA0911001296240 (Nat. Arb. Forum Jan. 13, 2010). The Complainant is Microsoft Corporation and the Respondent is TN Chen from China. The domain names at issue are <bing-wallpaper.com> and <bingimg.com>, registered with GoDaddy.com, Inc. “Bing” is the name of Microsoft’s web search engine.

ICANN‘s Uniform Domain Name Dispute Resolution Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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.
   The Panel found that the disputed domain names both contain Complainant’s mark and add the generic top-level domain “gTLD” “.com.” The <bing-wallpaper.com> domain name also adds a hyphen and the generic term “wallpaper.” The <bingimg.com> domain name further adds the abbreviation “img,” which stands for image. The Panel finds the addition of a hyphen, generic term, letters, and a gTLD fail to adequately distinguish the disputed domain names from Complainant’s mark. Therefore, the Panel finds Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names are confusingly similar to Complainant’s BING mark.
2. Respondent has no rights or legitimate interests in respect of the domain name.
   Because Respondent has offered no evidence, and there is no evidence on the record, suggesting that Respondent is commonly known by the <bing-wallpaper.com> and <bingimg.com> domain names. Complainant asserts that Respondent has never been authorized or licensed to use the BING mark.Therefore, the Panel found that Respondent has not established rights or legitimate interests in the <bing-wallpaper.com> and <bingimg.com> domain names.
3. The domain name has been registered and is being used in bad faith.
   Finally, the Panel explained that Respondent’s <bing-wallpaper.com> and <bingimg.com> domain names resolve to a website containing hyperlinks to search engine providers that compete with Complainant. Internet users may use a competing search engine instead of Complainant’s new search engine because of Respondent’s competing use of the confusingly similar disputed domain names. Therefore, the Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s search engine business, which constitutes bad faith registration.

Accordingly, the Panel ordered the disputed domain names to be transferred from the Respondent to the Complainant.

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