Google Inc. v. Publica
Claim Number: FA0911001294447
Complainant is Google Inc. (“Complainant”),
represented by Maria F. Castellanos,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain
name at issue is <googuia.com>, registered with Godaddy.com,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
November 13, 2009; the National Arbitration Forum received a hard copy of the
Complaint on November 19, 2009.
On November
13, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the <googuia.com>
domain name is registered with Godaddy.com, Inc. and that Respondent is the
current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, 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 November
30, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
December 21, 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@googuia.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
29, 2009, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, 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:
Complainant, Its Business and Its Mark
1.
Google is a
2.
Google was created in 1997 by
Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, Google
has become one of the largest, most highly recognized, and widely used Internet
search services in the world. Google’s
primary website is located at www.google.com.
3.
Currently, the GOOGLE search engine
maintains one of the largest collections of searchable documents in the
world. The GOOGLE search engine provides
an easy-to-use interface, advanced search technology, and a comprehensive array
of search tools, and allows Internet users to search for and find a wide
variety of content in many different languages.
4. Google’s website is one of the most
popular destinations on the Internet.
For example, comScore has ranked Google as the most visited group of
websites in the world. Further,
Nielsen’s NetRatings has ranked Google’s search engine as the number one search
engine for each of the months of October, November and December 2008, in each
case with over 50 percent of searches.
5. Google has consistently been honored
for its technology and its services, and has received numerous industry awards,
including awards dating from 1998.
6. Google also offers co-branded web
search solutions and has hundreds of thousands of publishers in its content
network.
7. In addition to being accessible from
desktop PCs, Google’s adaptable, highly scalable search technology can also be
accessed from most mobile and wireless platforms.
8. Google
also offers a wide range of other products and services besides search. A full list of available products and
services can be found at http://www.google.com/intl/en/options/.
9. The
GOOGLE Mark identifies Google’s award-winning, proprietary, and unique search
services, search engine technology, and associated products and services. The GOOGLE Mark has been widely promoted
among members of the general consuming public since 1997, and has exclusively
identified Google. As a result, the
GOOGLE Mark and name symbolize the tremendous goodwill associated with Google
and are property rights of incalculable value.
Due to widespread and substantial international use, this mark and name
have become famous.
10. Google
owns numerous
Registrant, Its Activities and Its Registration of the Domain Name
11. Registrant
is an entity who claims to be located in
12. Registrant registered the Domain Name on 28 August, 2007.
13. The Domain Name currently resolves to a website that imitated Complainant’s website.
Efforts to Resolve This Matter
14. Google has exchanged the following communications with Registrant in an effort to have the Domain Name transferred from Registrant to Google:
·
On June 25, 2009, acting on behalf of Google, Inc., we sent a
cease and desist letter to the street address found at the WHOIS database, as
well as to the internet address arturogaciapublica@gmail.com, whereby we
requested that registrant immediately transferred the domain to Google, Inc.
·
Please note that the letter sent to the street address was not
delivered since the address does not exist, as informed by the courier service.
·
Even though the communication sent by email did not bounce, we did
not receive a response from registrant.
·
On October 19, 2009, acting on behalf of Google, Inc., we sent a
new cease and desist letter to the new street address found at the WHOIS
database, as well as to the internet address arturogaciapublica@gmail.com, whereby we requested once more
that registrant immediately transferred the domain to Google, Inc.
·
Please note that the letter sent to this new street address was
not delivered, since the address does not exist, as informed by the courier
service.
·
Even though the communication sent by email did not bounce, we did
not either receive a response from registrant.
Legal Grounds
Likelihood of Confusion
15. Google has
used the GOOGLE Mark continuously since well prior to August 28, 2007, the
registration date for the Domain Name.
Google owns various
16. The Domain
Name is “nearly identical or confusingly similar” to Complainant’s GOOGLE
Mark. Minor alterations or misspellings
do not eliminate the confusingly similar aspects of the Domain Name and
Complainant’s mark. See Google
Inc. v. Buenav Vista LLC, FA0901001243912 (Nat’l Arb. Forum Mar. 10, 2009)
(finding a disputed domain that contains a misspelled version of complainant’s
mark to be confusingly similar) (re googl.com domain name); see also Valpak
Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17,
2006) (finding the <vallpak.com> domain name to be confusingly similar to
the VALPAK mark under Policy ¶4(a)(i).).
Here, the Domain Name is www.googuia.com, which reproduces four (4) of
the six (6) letters found in the GOOGLE mark; therefore, the Domain Name is
confusingly similar to Complainant’s mark.
As such, the Domain Name is nearly identical, and
certainly confusingly similar, to the GOOGLE Mark.
17. As Panels
have noted, any “[r]espondent would be hard pressed to show that it had rights
or legitimate interests in the domain name because Complainant’s [GOOGLE] mark
is so well known.” Google Inc. v.
Mikel M Frieje, FA011000102609 (Nat. Arb. Forum Jan. 11, 2002) (re
googlesex.com domain name). Registrant
has not been authorized by Complainant to register or use the Domain Name.
18. The Domain
Name resolves to a website that substantially imitates Complainant’s
website. Specifically, the domain name www.googuia.com
gives access to a website with the same design and structure used by website www.google.com,
with the purpose of rendering search engine services. Such use is neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the Domain Name.
See, e.g., Nat’l
Westminster Bank plc v. Blues, FA731824 (Nat. Arb. Forum Aug 7, 2006)
(“Respondent is using the disputed domain name to divert Internet users
attempting to locate Complainant’s website to a website that is a fraudulent
imitation of Complainant’s website…such diversion via an imitation website as
an attempt by Respondent to pass itself off as Complainant is neither a bona
fide offering of goods or services under [the Policy]; Coutts & Company
v. Mr. Philip Mano, FA0902001247305 (Nat. Arb. Forum Apr. 1, 2009)
(“Respondent’s attempt to capitalize on Complainant’s well known mark by
attracting Internet users to its website, imitating Complainant’s genuine
website and soliciting personal information, does not constitute a use in
connection with a bona fide offering of goods and services pursuant to [the
Policy] or a legitimate noncommercial or fair use pursuant to [the
Policy]”).
19. Finally,
Registrant has failed to comply with demands from Google regarding transfer of
the Domain Name. Such failure to respond
to a cease-and-desist letter indicates bad faith registration and use of a
domain name. See, e.g., Encyclopedia Britannica v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong
support for a determination of ‘bad faith’ registration and use.”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding
bad faith where “The Complainant alleges that it sent numerous cease and
desist letters to [r]espondent without receiving a response”).
20. On
information and belief, Registrant is not commonly known by the name or
nickname of the Domain Name, or any name containing Complainant’s GOOGLE
Mark. Registrant’s WHOIS information in
connection with the Domain Name makes no mention of the Domain Name or the Mark
as Registrant’s name or nickname. See,
Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Nat. Arb.
Forum Nov. 16, 2006) (“[r]espondent’s WHOIS information does not suggest that
[r]espondent is commonly known by the <ntester.com> domain name”). Registrant’s name is PUBLICA.
21. Complainant has not authorized or licensed
Registrant to use any of its trademarks in any way. Unlicensed, unauthorized use of domains
incorporating complainant’s trademark is strong evidence that Registrant has no
rights or legitimate interests. See,
e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains,
FA0709001076561 (Oct. 26, 2007).
22. Thus, Registrant has no rights or legitimate interests in the Domain Name.
Bad Faith
23. The evidence
overwhelmingly supports the conclusion that Registrant registered and is using
the Domain Name in bad faith. First, the
fame and unique qualities of the GOOGLE Mark make it extremely unlikely that
the Registrant created the Domain Name independently. See, e.g., The J. Jill Group, Inc.
v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat. Arb. Forum
July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark
and Complainant’s J. JILL listing on the Principal Register of the USPTO,
[r]espondent is thought to have been on notice as to the existence of
Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus,
[r]espondent’s registration despite this notice is evidence of bad faith
registration”). Even constructive
knowledge of a famous mark like GOOGLE is sufficient. Google v. Abercrombie 1,
FA0111000101579 ( Nat. Arb. Forum Dec. 10, 2001) (“because of the famous and
distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to
have been on notice of the existence of Complainant’s mark at the time
[r]espondent registered the infringing [domain name]”) (re googld.com domain
name).
24. Second,
Respondent’s current use of the Domain Name to resolve to a website that
imitates Complainant’s website constitutes bad faith registration and use. See, e.g., Pacificherbal, LLC v.
emmerse c/o lazaro remond, FA0902001246873 (Nat. Arb. Forum Apr. 6, 2009)
(finding bad faith where Respondent’s reproduced Complainant’s entire website);
Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003)
(finding bad faith where the respondent “duplicated Complainant’s mark and
logo, giving every appearance of being associated or affiliated with
Complainant’s business…to perpetrate a fraud upon individual shareholders who
respected the goodwill surrounding the AIG mark”).
25. Finally,
Registrant has failed to comply with demands from Google regarding transfer of
the Domain Name. Such failure to respond
to a cease-and-desist letter indicates bad faith registration and use of a
domain name. See, e.g., Encyclopedia Britannica v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong
support for a determination of ‘bad faith’ registration and use.”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding
bad faith where “The Complainant alleges that it sent numerous cease and
desist letters to [r]espondent without receiving a response”).
26. As shown above, Registrant has registered and is using the 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”) (e.g., Reg. No. 2,954,071 issued May 24, 2005), as well as other
international trademark registrations, for its GOOGLE mark.
Respondent registered the <googuia.com> domain name on August 28, 2007. Respondent’s disputed domain name resolves to
a website that imitates Complainant’s official website located at the
<google.com> domain name and offers search engine services in direct
competition with Complainant.
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.
Complainant owns several trademark
registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,954,071
issued May 24, 2005). The Panel finds
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 argues that
Respondent’s <googuia.com>
domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to
Policy ¶4(a)(i). Respondent’s disputed
domain name contains a misspelled version of Complainant’s mark and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds a domain name that contains a misspelled version a
complainant’s mark creates a confusing similarity between the disputed domain
name and the established mark under the facts and circumstances of this case
(which includes the fact Respondent’s domain name resolves to a web site which
imitates Complainant’s trade dress). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w” or the omission of periods or other such
“generic” typos do not change respondent’s infringement on a core trademark
held by the complainant); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”). In addition, the Panel finds that the addition of a gTLD
is irrelevant in distinguishing a disputed domain name from an established
mark. See Trip Network Inc.
v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i)
analysis); see also Reese v. Morgan,
FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the
generic top-level domain “.com” is insufficient to differentiate a disputed
domain name from a mark). Therefore, the
Panel finds that Respondent’s <googuia.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant
to Policy ¶4(a)(i).
The
Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent
does not have rights or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶4(c).
See 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 Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Respondent
has offered no evidence, and there is no evidence in the record, suggesting
Respondent is commonly known by the disputed
domain name. Complainant asserts Respondent is not
authorized to use the GOOGLE mark. The
WHOIS information identifies registrant as “Publica.” Therefore, the Panel finds Respondent has not
established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name
resolves to a website that imitates
Complainant’s official website. This
imitation is referred to as “passing off.”
The Panel finds Respondent’s attempt to pass itself off as an entity
associated with Complainant is neither a bona fide offering of goods or
services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair
use pursuant to Policy ¶4(c)(iii). See
Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8,
2005) (finding the respondent’s attempt to pass itself off as the complainant
by implementing a color scheme identical to the complainant’s was evidence that
respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶4(a)(ii)); 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 . . . .”).
Additionally, the website
resolving from Respondent’s disputed domain name offers search engine services
that directly compete with Complainant’s business. The Panel finds Respondent’s competing use of
the disputed domain name is further evidence Respondent lacks rights and
legitimate interests in the disputed domain name.
The Panel finds Policy ¶4(a)(ii)
satisfied.
The
Panel finds Respondent’s registration and use of the disputed domain name
to operate a website that attempts to create the impression of being associated
with Complainant and offer search engine services in direct competition with
Complainant constitutes a disruption of Complainant’s business and qualifies as
bad faith registration and use pursuant to Policy ¶4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum
Oct. 30, 2006) (concluding that the respondent registered and used the
<sportlivescore.com> domain name in order to disrupt the complainant’s
business under the LIVESCORE mark because the respondent was maintaining a
website in direct competition with the complainant); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that the respondent registered and used the domain name
<eebay.com> in bad faith where the respondent has used the domain name to
promote competing auction sites).
Respondent is using the disputed domain name in order to
intentionally attract Internet users to its website by creating a strong
possibility of confusion with Complainant’s GOOGLE mark. Respondent offers search engine services in
direct competition with Complainant, which is further evidence of bad
faith. Therefore, pursuant to Policy ¶4(b)(iv),
the Panel finds this use of the disputed domain name constitutes bad faith
registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); see also State Fair of Tex.
v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad
faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
Complainant contends Respondent is
using the disputed domain name to pass
itself off as Complainant by imitating the structure and layout of
Complainant’s official website. The Panel finds Respondent’s activities
constitutes passing off and is further
evidence of bad faith use and registration pursuant to Policy ¶4(a)(iii). See
Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)
(finding that the respondent's use of <monsantos.com> to misrepresent
itself as the complainant and to provide misleading information to
the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO
May 29, 2000) (finding that the respondent’s use of the title
“Dodgeviper.com Official Home Page” gave consumers the impression that the
complainant endorsed and sponsored the respondent’s website).
The Panel finds Policy ¶4(a)(iii)
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 <googuia.com> domain name be TRANSFERRED from
Respondent to Complainant.
Dated: January 11, 2010
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