Google Inc. v. Max Gerny
Claim Number: FA0910001292247
Complainant is Google
Inc. (“Complainant”), represented by Eric
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googledataentry.com>, registered with Ascio Technologies, 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 October 29, 2009; the National Arbitration Forum received a hard copy of the Complaint October 30, 2009.
On November 2, 2009, Ascio Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <googledataentry.com> domain name is registered with Ascio Technologies, Inc. and that Respondent is the current registrant of the name. Ascio Technologies, Inc. verified that Respondent is bound by the Ascio Technologies, 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").
On November 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@googledataentry.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.
Preliminary Issue:
Other Correspondence
The National Arbitration Forum received communication from a
third-party appearing to be Respondent.
The Forum determined that this correspondence is not considered to be a
Response because it did not meet the requirements of ICANN Rule #5. The Panel may, in its discretion, request
additional information from Respondent to obtain additional information
regarding the content of the correspondence pursuant to Supplemental Rule 12;
however, based on the allegations in the Complaint, sufficient information has
been provided to render a decision without additional information and the Panel
chooses to proceed on the merits of the cause.
Preliminary Issue:
Consent to Transfer
The National Arbitration Forum received communication from a third-party appearing to be Respondent, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purported to consent to transfer of the <googledataentry.com> domain name.
Respondent consents to transfer the <googledataentry.com> domain name to Complainant. However, after the initiation of this proceeding, Ascio Technologies, Inc., placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in these circumstances, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, two options are presented. The Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <googledataentry.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, inasmuch as Complainant
has not implicitly consented in its Complaint to the transfer of the
disputed domain name without a
decision on the merits by the Panel, the Panel finds that it is preferable to
proceed on the merits of the cause. The
“consent-to-transfer” approach is one way for cybersquatters to avoid adverse
findings against them. In Graebel Van Lines, Inc. v.
Respondent has admitted in his
response to the complaint of Complainant that it is ready to offer the transfer
without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be
along with the findings in accordance with the Policy.
Therefore, the Panel elects to analyze this case under the
elements of the UDRP to insure that the matter is resolved on the merits and
not by some procedural ploy.
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, <googledataentry.com>, is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent has no rights to or legitimate interests in the <googledataentry.com> domain name.
3. Respondent registered and used the <googledataentry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., operates an internet search engine service, as well as other internet-related services. Complainant performs these services from its <google.com> domain name. Complainant holds multiple registrations of its GOOGLE mark with multiple governmental authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 issued January 20, 2004).
Respondent registered the disputed domain name December 26, 2008. Respondent’s disputed domain name does not resolve to an active website.
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 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 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.
Complainant holds multiple registrations for its GOOGLE mark
with the USPTO (e.g., Reg. No.
2,806,075 issued January 20, 2004), as well as other governmental trademark
authorities. The Panel finds this
registration is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i), as the Policy only requires Complainant establish
rights in a jurisdiction regardless of where Respondent resides. See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v.
The disputed domain name contains Complainant’s GOOGLE mark
with the addition of the generic phrase “data entry,” and the generic top-level
domain “.com.” The Panel finds the
addition of a generic phrase and top-level domain to a Complainant’s mark is
not sufficient to distinguish the disputed domain name from Complainant’s
mark. Thus, the Panel finds the disputed
domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶
4(a)(i). See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Google Inc. v.
Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the
respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark
where the respondent merely added common terms such as “buy” or “gear” to the
end); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserted that Respondent does not have any
rights to or legitimate interests in the disputed domain name. After Complainant makes a prima facie case supporting its allegations,
the burden shifts to Respondent to prove that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a
sufficient prima facie case but that Respondent
has not submitted a response. Thus the Panel
may assume that Respondent does not have rights or legitimate interests in the
disputed domain name. Nonetheless, the
Panel examines the record to determine whether evidence in the record suggests
that Respondent has rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Complainant alleges that Respondent is not commonly known by
the disputed domain name. The WHOIS
information lists the registrant of the disputed domain name as “Max Gerny” and
no additional information in the record reflects that Respondent has been
authorized in any manner to utilize Complainant’s GOOGLE mark. Thus, the Panel finds that Complainant
satisfied Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Further, Respondent’s disputed domain name does not resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and held the disputed domain name in bad faith. ICANN Policy ¶ 4(b) lists four bad faith factors but that list is not exhaustive and bad faith registration and use may arise from alternate scenarios. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
While the Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, this list merely illustrates possible situations that demonstrate bad faith. The Panel may look to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent failed to make an active use of the disputed
domain name over the past year. The
Panel finds that Respondent’s failure to make an active use of a confusingly
similar disputed domain name supports findings of bad faith registration and
use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A.
v.
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 <googledataentry.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 17, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum