Google Inc. v. Robert Carr
Claim Number: FA0807001216839
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adsence.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 22, 2008; the National Arbitration Forum received a hard copy of the Complaint July 23, 2008.
On July 24, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <adsence.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
28, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 18, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sits as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <adsence.com>, is confusingly similar to Complainant’s ADSENSE mark.
2. Respondent has no rights to or legitimate interests in the <adsence.com> domain name.
3. Respondent registered and used the <adsence.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., is in the business of providing Internet search services, including offering advertisements specifically tailored to Internet users’ search queries. Complainant registered its ADSENSE mark in association with its business with the United States Patent and Trademark Office (“USPTO”) September 7, 2004 (Reg. No. 2,881,856).
Respondent, Robert Carr, acquired the <adsence.com> domain name at the earliest on February 1, 2006. The disputed domain name originally was registered July 22, 2003. The website resolving from the disputed domain name has links and text competing with Complainant and directly related to Complainant, such as “Adsence.com – The best Google AdsenseTM resource on the net.”
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."
Given 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 will draw such inferences as the Panel 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 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 Complainant to 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.
The Panel finds that Complainant’s registration with the USPTO of its ADSENSE mark, which predates Respondent’s acquisition date of the disputed domain name, is sufficient to establish rights in its mark pursuant to Policy ¶ 4(a)(i). See BWR Res. Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (“The Panel accepts that ‘registration’ in the case of this Respondent refers to the date when it acquired the name from the person who first registered it.”); see also Sidestep, Inc. v. WebQuest.com, Inc., D2007-0549 (WIPOJune 8, 2007) (finding the relevant date of registration for the disputed domain name to be the date on which the respondent became the registrant, not the date on which the domain name was first created and registered to another party); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The Panel finds that the disputed domain name, <adsence.com>, fully incorporates Complainant’s ADSENSE mark with the substitution of the letter “C” for the letter “S,” which is a common misspelling and is phonetically identical to Complainant’s mark. Furthermore, the addition of a generic top-level domain “.com” is irrelevant when determining if the disputed domain name is confusingly similar to Complainant’s mark. Therefore, the Panel finds that Respondent’s <adsence.com> domain name is confusingly similar to Complainant’s ADSENSE mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Initially, Complainant has the burden to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to provide proof of its rights or legitimate interests in the disputed domain name. Respondent’s failure to respond to this Complaint furthers the presumption that the Panel may make against Respondent. The Panel finds that Complainant made a prima facie case according to Policy ¶ 4(a)(ii). However, this Panel chooses to evaluate all of the evidence, pursuant to Policy ¶ 4(c), before making a determination as to whether or not Respondent has rights to or legitimate interests in the domain name. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends and the Panel finds that Respondent is attempting to confuse Internet users by offering services in competition with Complainant and passing itself off as Complainant on the website resolving from the <adsence.com> domain name. In Ultimate Electronics., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003), the panel found that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.” Similarly, Respondent is not offering bona fide goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial and fair use under Policy ¶ 4(c)(iii) and has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Moreover, nothing in the WHOIS information or in any other evidence suggests that Respondent is commonly known by the <adsence.com> domain name. Complainant also asserts that it has not authorized or licensed Respondent to use its ADSENSE mark in the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent does not have rights in a domain name when the respondent is not known by the mark. Therefore, this Panel finds that Respondent is not commonly known by the disputed domain name and has no rights to or legitimate interests in it 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends and the Panel agrees that Respondent’s registration of an intentional misspelling of Complainant’s ADSENSE mark constitutes typosquatting and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Additionally, Complainant contends that Respondent is attempting to benefit financially from the likelihood of confusion caused by the disputed domain name when Internet users seeking Complainant’s product and services are diverted to Respondent’s site. The Panel finds that Respondent is attempting to confuse Internet users as to Complainant’s sponsorship and affiliation with the disputed domain name for its own commercial gain, which supports findings of bad faith registration and use in violation of Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Finally, the Panel also finds that Respondent is attempting to divert Internet users seeking Complainant to Respondent’s own website or to display links to Complainant’s competitors, which is a disruption of Complainant’s business. The Panel finds that such action constitutes bad faith registration and use by Respondent in violation of Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adsence.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 3, 2008.
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