Google Inc. v. Absolutee Corp. Ltd. c/o DNS Manager
Claim Number: FA0907001275521
Complainant is Google Inc. (“Complainant”), represented by Meredith
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlewebmarketing.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2009.
On July 29, 2009, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlewebmarketing.com> domain name 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 July 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 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@googlewebmarketing.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 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <googlewebmarketing.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlewebmarketing.com> domain name.
3. Respondent registered and used the <googlewebmarketing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., offers proprietary search engine services and related technology. Complainant has registered its GOOGLE mark with numerous governmental trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,806,075 issued January 20, 2004).
Respondent registered the <googlewebmarketing.com> domain name on May 19, 2008. The disputed domain name resolves to a website that offers competitive web design and marketing 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’s registrations of the
GOOGLE mark with the USPTO (i.e. Reg. No. 2,806,075 issued January 20, 2004)
and other governmental trademark authorities worldwide adequately demonstrate
Complainant’s rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <googlewebmarketing.com>
domain name contains Complainant’s GOOGLE mark and adds the descriptive phrase
“web marketing” and the generic top-level domain “.com.” The Panel notes that neither alteration
removes the disputed domain name from the realm of confusing similarity, as
descriptive terms heighten any resulting confusing similarity and because
top-level domains are required in every domain name. Therefore, the Panel finds that the disputed
domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “Absolutee Corp. Ltd. c/o DNS Manager.” Moreover, Complainant argues that Respondent
is not permitted or authorized to use Complainant’s mark. Complainant asserts, and the Panel so finds,
that Respondent is not nor has ever been commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use); see also
Respondent’s disputed domain name
resolves to a website that competes with Complainant by providing website
design and marketing services for commercial gain. Therefore, the Panel finds that Respondent has
failed to create 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). See Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the corresponding
website and disputed domain name to promote its competitive services disrupts
Complainant’s business, and therefore evidences Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii).
See Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also DatingDirect.com Ltd.
v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28,
2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent has created a likelihood
of confusion as to Complainant’s association or sponsorship of the disputed
domain name, which was registered on May 19, 2008, for commercial gain due Respondent’s
competing operation. The Panel agrees,
and finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July
29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing
similarity of its domain names to benefit from the valuable goodwill that Complainant
has established in its marks.
Consequently, it is found that Respondent registered and used the domain
names in bad faith under Policy ¶ 4(b)(iv).”).
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 <googlewebmarketing.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 7, 2009
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