Google, Inc. v. Viajar-Facil.com c/o Ruben Moreno
Claim Number: FA0907001272139
Complainant is Google, Inc. (“Complainant”), represented by Fernanda
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <google-milhas.com>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2009.
On July 6, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <google-milhas.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 2009 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@google-milhas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <google-milhas.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <google-milhas.com> domain name.
3. Respondent registered and used the <google-milhas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., provides and maintains a search engine as well as offers e-mail and web hosting services. Complainant has operated under the GOOGLE mark since 1997. Complainant holds multiple trademarks with the United States Patent and Trademark Office (“USPTO”), as well as other international trademark registrations, for its GOOGLE mark (i.e., Reg. No. 2,954,071 issued May 24, 2005).
Respondent registered the <google-milhas.com> domain name on September 8, 2008. Respondent’s disputed domain name resolves to a website offering travel-related services.
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.
The Panel finds that Complainant has established rights in
the GOOGLE mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See AOL LLC v. Interrante, FA
681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had
submitted evidence of its registration with the USPTO, “such evidence
establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia,
Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
[EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <google-milhas.com> domain name is confusingly
similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds a hyphen, adds the term “milhas,” and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the term
“milhas” fails to create a distinctive characteristic in the disputed domain
name because Complainant’s GOOGLE mark remains the dominant portion of the
disputed domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095
(WIPO May 7, 2002) (finding that several domain names incorporating the
complainant’s entire EXPERIAN mark and merely adding the term “credit” were
confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22,
2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark
in which Complainant has shown prior rights.
The addition of the generic term, “perfumes” is not a distinguishing
feature, and in this case seems to increase the likelihood of confusion because
it is an apt term for Complainant’s business.”). In addition, the Panel finds that the addition
of a hyphen and a gTLD are irrelevant in distinguishing a disputed domain name
from a registered mark. See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <google-milhas.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <google-milhas.com>
domain name, in that the registrant is listed as “Viajar-Facil.com c/o Ruben
Moreno.” Without evidence to the
contrary, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See
Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also
Complainant alleges that Respondent uses the <google-milhas.com> domain name for the
operation of a commercial offering of travel-related services. The Panel finds that Respondent’s use of the
disputed domain name to divert Internet users by creating a likelihood of
confusion between the disputed domain name and Complainant’s mark for
Respondent’s commercial benefit is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <google-milhas.com> domain name to intentionally cause a likelihood of confusion between the disputed domain name and Complainant’s mark to commercially benefit is evidence of bad faith. The Panel finds that Respondent’s use of the disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <google-milhas.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 17, 2009
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