Google Inc. v. C. Pozin c/o
Claim Number: FA0712001124324
Complainant is Google Inc. (“Complainant”), represented by Karen
Robertson, of Google Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlemashup.com>, registered with Zigzagnames.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On January 9, 2008, Zigzagnames.com LLC confirmed by e-mail to the National Arbitration Forum that the <googlemashup.com> domain name is registered with Zigzagnames.com LLC and that Respondent is the current registrant of the name. Zigzagnames.com LLC has verified that Respondent is bound by the Zigzagnames.com LLC 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 January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2008 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@googlemashup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 makes the following assertions:
1. Respondent’s <googlemashup.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlemashup.com> domain name.
3. Respondent registered and used the <googlemashup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., is a company that offers consumers a variety of Internet search engine services. In addition to these services, Complainant offers a wide range of technological products and services including hardware and software. Complainant registered its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) on January 20, 2004 (Reg. No. 2,806,075). Complainant has also registered its GOOGLE mark with multiple other governmental authorities.
Respondent registered the disputed domain name on January 19, 2007. Respondent is using the <googlemashup.com> domain name to resolve to a website that displays sponsored advertisements, some of which directly compete with Complainant. In addition, the website resolving from the disputed domain name contains a search engine that returns results for sponsored advertisements.
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 Complainant's undisputed representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
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 registered its GOOGLE mark with the USPTO and
multiple other governmental authorities.
The Panel finds Complainant has sufficiently established rights in its
GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA
1118154 (Nat. Arb. Forum Jan. 18,
2008) (“…Complainant asserts rights in
the mark through its registration of the mark with the United States Patent and
Trademark Office. This
registration sufficiently establishes Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i).”); see also Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
Respondent’s <googlemashup.com> domain name fully
incorporates Complainant’s GOOGLE mark with the addition of the generic term
“mashup,” which refers to amalgamated mp3 files. In addition, generic top-level domains
(gTLDs) such as “.com” are considered irrelevant when evaluating whether a
disputed domain name is confusingly similar to a mark. Therefore, the Panel finds that Respondent’s <googlemashup.com> domain name is
confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of its
allegations, the burden shifts to Respondent to establish that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
sufficiently presented a prima facie
case to support its allegations. Since
Respondent has failed to respond to the Complaint, the Panel may assume
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002)
(“[B]ased on Respondent's failure to respond, it is presumed that Respondent
lacks all rights and legitimate interests in the disputed domain name.”).
Respondent’s disputed domain name resolves to a website
which displays sponsored advertisements, some of which compete with Complainant
and a search engine service that directly competes with Complainant. The Panel finds this diversionary use is not
a use in connection with a bona fide
offering of goods pursuant to Policy ¶ 4(c)(i), or a
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that the respondent did not have rights or
legitimate interests in a domain name that used the complainant’s mark and
redirected Internet users to a website that pays domain name registrants for referring
those users to its search engine and pop-up advertisements); see also Trans
Global
Additionally, nothing in the record or WHOIS information indicate Respondent is commonly known by the <googlemashup.com> domain name. Complainant has not authorized Respondent to use its GOOGLE mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which displays sponsored advertisements, some of which compete with Complainant. Also, the website which resolves from the disputed domain name offers search engine services that directly compete with Complainant. The Panel finds Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also H-D Michigan Inc. v. Buell d/b/a Pre-owned Harleys, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
In addition, Respondent is using the confusingly similar <googlemashup.com> domain name to
generate revenues from the sponsored advertisements displayed on the website
that resolves from the disputed domain name.
The Panel finds this attempt by Respondent to profit from the goodwill
associated with Complainant’s GOOGLE mark constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlemashup.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary Panelist
Dated: March 3, 2008
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