Google, Inc. v. Abercrombie 1
Claim Number: FA0111000101579
Complainant is Google, Inc., Mountain View, CA (“Complainant”) represented by Julia Ann Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner. Respondent is Abercrombie 1, Oakland, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googld.com>, registered with Tucows.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 2, 2001; the Forum received a hard copy of the Complaint on November 5, 2001.
On November 5, 2001, Tucows confirmed by e-mail to the Forum that the domain name <googld.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 November 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 2001 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 the Respondent to the Complainant.
The <googld.com> domain name is confusingly similar to Complainant's GOOGLE mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name in bad faith.
Respondent failed to submit a Response.
Since 1997, Complainant has operated search services under the GOOGLE mark. Complainant's services index over 1.6 billion web pages and respond to over 100 million search queries per day. The search services provided by Complainant allow users to search for and find content in many different languages, access stock quotes, maps, news headlines, access telephone book listings for every city in the United States, and access the world's largest archive of usenet messages. Complainant is recognized as one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant's services are primarily located at <google.com>.
Complainant's search technology can also be accessed from all major wireless platforms such as WAP and I-mode telephones, handheld devices such as the Palm handheld PC, and Internet appliances. Customers of AT&T Wireless, Cingular Wireless, Sprint PCS, Handspring, Vodafone, and Yahoo!Inc. can all access Google's 1.6 billion Internet web pages through their telephones and wireless devices.
Complainant has filed two U.S. Trademark applications for the mark. Complainant is currently the owner of numerous trademark registrations throughout the world including: Australia, Canada, China, Hong Kong, Israel, Japan, Mexico, New Zealand, Taiwan, Switzerland, and South Korea. Complainant's GOOGLE mark has become famous and holds substantial goodwill for Complainant. Complainant has common law rights to the mark in the United States.
Respondent registered the disputed domain name on August 29, 2000. The <googld.com> domain name is a misspelling of Complainant's GOOGLE mark. The disputed domain name is linked to a pornographic website.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant through continuous and extensive use has established that it has common law rights in the GOOGLE mark. Furthermore, Respondent's <googld.com> domain name is confusingly similar to Complainant's mark because it has merely replaced the "e" in GOOGLE with a "d". The misspelling of words in another's mark does not create a distinct mark. See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the <googld.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <googld.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959). Furthermore, <googld.com> is a misspelling of a famous mark which does not give rise to rights and legitimate interests. See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark).
Respondent has linked the disputed domain name to a pornographic website. It has been found that this type of use does not create rights or legitimate interests. See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
Furthermore, Respondent's use of a confusingly similar domain name for sexually explicit material is not considered a bona fide offering of goods and services. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent's registration and use of the <googld.com> domain name is typosquatting. This practice of “typosquatting” has been recognized as a bad faith use of a domain name under the UDRP. See, e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding “wwwalavista.com”, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Furthermore, because of the famous and distinctive nature of Complainant's GOOGLE mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <googld.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Respondent has linked the confusingly similar <googld.com> domain name to a pornographic website for commercial gain. This conduct is evidence of bad faith. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <googld.com>, be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 10, 2001
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