Google Inc. v. Andre Jensen
Claim Number: FA0911001295127
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlemapsrealestate.com>, registered with Aust Domains International Pty Ltd d/b/a Aust Domain.
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 December 1, 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@googlemapsrealestate.com by e-mail.
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 <googlemapsrealestate.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlemapsrealestate.com> domain name.
3. Respondent registered and used the <googlemapsrealestate.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is
an Internet services company that promotes its products and services under the
GOOGLE mark, which Complainant registered with the United States Patent and Trademark
Office (“USPTO”) on
Respondent, Andre Jensen,
registered the <googlemapsrealestate.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 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
registrations with the USPTO (Reg. No. 2,806,075
issued January 20, 2004) and the Trade Marks Office of Australia (Reg. No.
788,234 issued November 14, 2005).
See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that
Respondent’s <googlemapsrealestate.com> domain name is confusingly similar to its GOOGLE
mark. The <googlemapsrealestate.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive terms “maps” and “real estate” have been added to the mark;
and (2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of terms
that describe a mark holder’s business, as do “maps” and “real estate” in this
case, does not sufficiently distinguish a domain name from a mark that it
incorporates for the purposes of Policy ¶ 4(a)(i). The Panel also finds that the addition of a
gTLD does not reduce the likelihood of confusion between the domain name and
the mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so the <googlemapsrealestate.com>
domain name is confusingly similar to
Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). See
Disney Enters. Inc. v. McSherry, FA
154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see
also Gillette Co. v. RFK Assocs., FA 492867 (Nat.
Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,”
which described the complainant’s products, and the generic top-level domain
“.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <googlemapsrealestate.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known
by the <googlemapsrealestate.com> domain name nor has it ever been
the owner or licensee of the GOOGLE mark. Respondent has been identified in the WHOIS
registrant information as “Andre Jensen,”
and nothing in the record reflects that Respondent has ever been known by any
variant on the GOOGLE mark. Respondent
has also failed to show any evidence contrary to Complainant’s
contentions. The Panel therefore finds
that Respondent is not commonly known by the <googlemapsrealestate.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see also 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).
Complainant contends
that Respondent is using the <googlemapsrealestate.com> domain
name to divert Internet users to a website that imitates Complainant’s
commercial “Google Maps” website.
Complainant also contends that Respondent is commercially benefitting
from that diversion. The Panel finds
that using a domain name to pass a website off as Complainant’s own commercial
website, and doing so for commercial gain, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use of a
domain name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the <googlemapsrealestate.com> domain name (initial
registration:
Complainant also contends that Respondent is gaining
commercially by profiting from selling its competing services, and that these
sales are evidence of Respondent’s bad faith registration and use of the <googlemapsrealestate.com> domain name
pursuant to Policy ¶ 4(b)(iv). The
Panel agrees and finds that Respondent’s commercial gain from its use of the <googlemapsrealestate.com> domain name is
evidence of its bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See
Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum
Respondent is also passing off the website that resolves
from the <googlemapsrealestate.com> domain name as Complainant’s own “Google Maps”
website. The Panel opines that
Respondent’s passing off activities are themselves evidence that Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See 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); see also Am.
Online, Inc. v. Miles, FA 105890 (Nat.
Arb. Forum
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 <googlemapsrealestate.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 11, 2010
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