Google Inc. v. Kun Zhang
Claim Number: FA0901001245131
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwick & West LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlevideodownload.com>, registered with 1&1 Internet AG.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <googlevideodownload.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlevideodownload.com> domain name.
3. Respondent registered and used the <googlevideodownload.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., was
created in 1997 and since then has become one of the largest, most highly
recognized, and widely used Internet search services in the world. Complainant holds several trademarks
registrations for its GOOGLE mark (i.e., Reg. No. 2,806,075 issued
Respondent registered the <googlevideodownload.com>
domain name on
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
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.
The Panel finds that Complainant’s registration of its
GOOGLE mark with the USPTO is sufficient to establish Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The <googlevideodownload.com>
domain name includes the GOOGLE mark in its entirety, adding the generic
top-level domain (gTLD) “.com” and the generic terms “video” and
“download.” The gTLD is immaterial to a Policy
¶ 4(a)(i) analysis.
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. If the Panel finds
that Complainant’s allegations establish such a prima facie case, the
burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). The Panel finds
that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the <googlevideodownload.com>
domain name pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the disputed domain name. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <googlevideodownload.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the GOOGLE mark, and the WHOIS information identifies Respondent as “Kun Zhang.”
Thus, Respondent has not established rights or legitimate interests in
the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum
Respondent is using the <googlevideodownload.com>
domain name to resolve to an adult-oriented website. The Panel finds this is not a bona fide offering of goods or services
nor a legitimate noncommercial or fair use.
Therefore, Respondent has not established rights or legitimate interests
in the <googlevideodownload.com>
domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Paws, Inc. v. Zuccarini,
FA 125368 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using
the <googlevideodownload.com>
domain name to resolve to an adult-oriented website. The Panel infers that Respondent is
attempting to profit by posting adult-orientated graphics and videos for which
Respondent presumably receives compensation.
Because the disputed domain name is confusingly similar to Complainant’s
GOOGLE mark, Internet users are likely to be misled or confused as to
Complainant’s association with the resolving website. The Panel finds that Respondent is profiting
from this confusion and therefore finds Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Google Inc. v.
Bassano, FA 232958
(Nat. Arb. Forum
Furthermore, the Panel finds that it may consider the
totality of the circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
The Panel finds that Complainant has satisfied 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 <googlevideodownload.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 13, 2009
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