Google Inc. v. Office Manager a/k/a H.
Hunchak
Claim Number: FA0205000113964
PARTIES
Complainant
is Google Inc., Mountain View, CA,
USA (“Complainant”) represented by Julia
Anne Matheson, of Finnegan Henderson
Farabow Garrett & Dunner L.L.P. Respondent is Office Manager a/k/a H. Hunchak, Edmonton, AB, CANADA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <googlepersonals.com>,
registered with OnlineNIC, Inc.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 10, 2002; the Forum received a hard copy of the Complaint
on May 13, 2002.
On
May 16, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain
name <googlepersonals.com> is
registered with OnlineNIC, Inc. and that Respondent is the current registrant
of the name. OnlineNIC, Inc. has
verified that Respondent is bound by the OnlineNIC, Inc. 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
May 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 6,
2002 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@googlepersonals.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
June 25, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <googlepersonals.com>
domain name is confusingly similar to Complainant’s registered GOOGLE mark.
2. Respondent has no rights or legitimate
interests in the <googlepersonals.com> domain name.
3. Respondent registered and used the
disputed domain name in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant is
the owner of numerous U.S. trademark registrations for the GOOGLE mark issued
in various countries throughout the world, including the following: Australian
Reg. No. 788234 issued March 12, 1999, Canadian Reg. No. TMA539576 issued
January 12, 2001, and Swiss Reg. No. 470018 issued March 12, 1999, among
others. Complainant is also the owner of numerous U.S. trademark applications
for the GOOGLE mark, including App. Nos. 75-554461 and 75-978469. Complainant
operates from the domain name <google.com>, which was registered on
September 15,1997. Complainant has used the GOOGLE mark since 1997.
Currently,
Complainant’s search services have an index of over two billion web pages and
respond to more than 100 million search queries per day. Complainant’s website
is one of the most popular destinations on the Internet. Nielsen NetRankings
ranked Complainant as number five of the Top 25 Web Properties for the week of
April 14, 2002. Complainant has co-branded web search solutions for information
content providers, and has partnerships with 130 companies in more than thirty
different countries.
Respondent registered the disputed domain
name on January 16, 2001. Respondent initially utilized the domain name by
directing Internet users to the <kiss.com> dating website and the
<udate.com> matchmaking website. Complainant’s investigation has revealed
that Respondent was seeking to transfer the domain to Complainant for $740,
after receiving a cease and desist notice. During the negotiations for the sale
of the domain name Respondent stated, “we are foregoing all future revenues,”
when stating its justification for the requested reimbursement and fees.
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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.
Complainant has established its rights
in the GOOGLE mark through registration with numerous countries, applications
for the GOOGLE mark with the United States Patent and Trademark Office, and
subsequent continuous use.
Respondent’s <googlepersonals.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s domain
name contains the Complainant’s established and famous mark in its entirety
with the addition of a generic word, namely, “personals.” The addition of an
ordinary word fails to detract from the dominant GOOGLE mark’s presence. See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the Complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this matter, the Panel may presume it has no rights or legitimate
interests in respect of the disputed 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).
Given the popularity and notoriety of
Complainant’s GOOGLE mark, it seems unlikely that Respondent could have any
rights or interests in a domain name incorporating the word GOOGLE. See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would
be hard pressed to find a person who may show a right or legitimate interest”
in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent has used the disputed domain
name to redirect Internet users to websites advertising dating services,
attempting to benefit from the amount of confusion that is generated. Such use
is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH
Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of Respondent and that Respondent would only
legitimately choose to use Complainant’s mark in a domain name if Respondent
was seeking to create an impression that the two businesses were affiliated); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of
Complainant’s mark “as a portal to suck surfers into a site sponsored by
Respondent hardly seems legitimate”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that,
because the Respondent's sole purpose in selecting the domain names was to
cause confusion with the Complainant's website and marks, it's use of the names
was not in connection with the offering of goods or services or any other fair
use).
Furthermore, Complainant’s
documentation of its negotiations with Respondent reveals that Respondent was
interested in selling the disputed domain name, albeit for more than the
expenses incurred via registration. Respondent’s willingness to dispose of the
disputed domain name implies it has no legitimate interests. See Wal-Mart
Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use).
Respondent is not commonly
known by “googlepersonals” or <googlepersonals.com> pursuant to
Policy ¶ 4(c)(ii). Respondent is only known to this Panel as Office Manager
a/k/a H. Hunchak. Respondent is not authorized to use Complainant’s GOOGLE mark
nor is Respondent a licensee of Complainant. See Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Great S.
Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds
that Respondent has no rights or legitimate interests in respect of the
disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinctive
nature of Complainant’s GOOGLE mark Respondent is thought to have had notice as
to the existence of Complainant’s mark at the time Respondent registered the
infringing <googlepersonals.com> domain name. Because Respondent
knew of Complainant’s trademark, its registration and use of the contested
domain name for commercial gain suggests opportunistic bad faith. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Nintendo
of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that
Respondent, at the time of registration, had notice of Complainant’s famous
POKÉMON and PIKACHU trademarks given their extreme
popularity); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14,
2000) (finding that the fame of the YAHOO! mark negated any plausible explanation
for Respondent’s registration of the <yahooventures.com> domain name).
Complainant has revealed uncontested
circumstances that indicate Respondent registered and used the disputed domain
name primarily for the purpose of selling, renting or otherwise transferring
the domain name for valuable consideration in excess of documented costs.
Complainant’s counsel offered to reimburse Respondent for $90, which is the
cost of an OnlineNIC membership fee and one gTLD domain name registration fee.
However, Respondent reiterated its earlier request for $740, while stating that
it was being reasonable in asking for that amount because “we are foregoing all
future revenues.” Respondent’s actions constitute bad faith registration and
use under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES
Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner."); see
also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated
bad faith when he requested monetary compensation beyond out of pocket costs in
exchange for the registered domain name); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a
Panel should not “put much weight on the fact that it was the Complainant who
contacted the Respondent to see if it was interested in selling the domain
name”).
Respondent registered and used <googlepersonals.com>,
a domain name that incorporates Complainant’s GOOGLE mark, in order to benefit
from Complainant’s goodwill and create confusion as to the source or
sponsorship of its website. Respondent’s sole purpose in registering
Complainant’s famous mark was to maximize the amount of Internet traffic it
could divert to Respondent’s website while commercially benefiting from the
diversion. Such behavior demonstrates bad faith registration and use within the
meaning of Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the Respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the requested relief should be
hereby GRANTED.
Accordingly, it is Ordered that the <googlepersonals.com>
domain name be TRANSFERRED from Respondent
to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 27, 2002
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