Google Inc. v. Office Manager a/k/a H. Hunchak
Claim Number: FA0205000113964
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.
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.
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 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 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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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