Google Inc. v. Robert Ragg
Claim Number: FA0804001178939
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> registered with Godaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 21, 2008.
On April 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April
24, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 14, 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@googletrademark.com, postmaster@googletrademark.net, postmaster@googletrademark.org, postmaster@googleearthtrademark.com and postmaster@googlecorporation.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> domain names.
3. Respondent registered and used the <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., offers an internationally used Internet search service through its <google.com> domain name. In addition, Complainant offers software, hardware and specialized search engine products, as well as other Internet related services under its GOOGLE mark. Complainant registered its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) on January 20, 2004 (Reg. No. 2,806,075). Complainant also holds multiple other registrations for its GOOGLE mark with the USPTO and other governmental authorities.
Respondent registered the disputed domain names beginning on August 1, 2007 and up until September 10, 2007. Respondent is using the disputed domain names to operate a website which offers phone numbers for sale.
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 on January 20, 2004. The Panel finds that such registration is evidence of Complainant’s rights in the 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent’s disputed domain names fully incorporate the GOOGLE mark with the addition of the generic or descriptive terms “earth,” “trademark,” or “corporation.” Complainant offers a product entitled “Google Earth,” and thus this term is descriptive of Complainant’s business. In addition, it is well established that the generic top-level domains are irrelevant for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant presents a prima facie case in support of these allegations, the burden shifts to Respondent to establish it does have rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant established an adequate prima facie case to support its allegations and Respondent has failed to submit a response to these proceedings. Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s disputed domain names resolve to a website which offers phone numbers for sale. The Panel finds Respondent’s use of the disputed domain names are not uses in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In addition, the Panel finds Respondent is not commonly
known by the disputed domain names and thus does not have rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent is
listed as “Robert Ragg” in the WHOIS record.
Additionally, the record indicates Complainant has not authorized
Respondent to use its GOOGLE mark in any manner. Thus, the Panel finds Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Foot Locker Retail, Inc. v.
Gibson, FA 139693 (Nat. Arb.
Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered five domain names which infringe on
Complainant’s GOOGLE mark. The Panel
finds Respondent’s registration of multiple infringing domain names constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness,
FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of
registration of several infringing domain names satisfies the burden imposed by
the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v.
Respondent is using the website resolving from its
confusingly similar domain name to offer phone numbers for sale. Respondent presumably profits from this use of
the confusingly similar disputed domain name.
Additionally, Respondent’s use of Complainant’s GOOGLE mark creates a
likelihood of confusion regarding the source of the content resolving from the
disputed domain names. The Panel finds
this use is an attempt by Respondent to profit from the goodwill associated
with Complainant’s mark. Therefore, the
Panel finds Respondent’s actions constitute bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googletrademark.com>, <googletrademark.net>, <googletrademark.org>, <googleearthtrademark.com> and <googlecorporation.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 4, 2008
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