Google Inc. v. Aloysius Thevarajah
Claim Number: FA0911001295342
PARTIES
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleos.org>,
registered with GoDaddy.com, Inc.
PANEL
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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 18, 2009; the National Arbitration Forum received a
hard copy of the Complaint on November 19, 2009.
On November 19, 2009, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <googleos.org>
domain name is registered with GoDaddy.com, Inc. and that the 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 20, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 10, 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@googleos.org by e-mail.
A timely Response was received on December 10, 2009 and determined to
be deficient pursuant to ICANN Rule 5 because a hard copy was not received
prior to the Response deadline.
On December 16, 2009, Complainant timely submitted an Additional
Submission.
On December 17, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. Meyerson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <googleos.org> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the googleos.org> domain name.
3. Respondent registered and used the <googleos.org> domain name in bad faith.
B. Respondent failed to submit a timely Response in accordance with Rule 5.[1]
FINDINGS
Complainant offers search-engine services under its GOOGLE mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GOOGLE mark (e.g., Reg. No. 2,806,075 issued January 20, 2004).
Respondent
registered the domain name on June 6, 2006.
The domain name currently resolves to a parked page containing
click-through ads through which Respondent presumably receives fees.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 timely response in accordance with Rule 5, 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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 offers search-engine services under its GOOGLE mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GOOGLE mark (e.g., Reg. No. 2,806,075 issued January 20, 2004). Previous panels have determined that a federal trademark registration is sufficient to establish rights under Policy ¶ 4(a)(i). 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 Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has established rights in its GOOGLE mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <googleos.org> domain name is confusingly similar to
Complainant’s GOOGLE mark. Complainant
contends the disputed domain name contains Complainant’s GOOGLE mark, simply
adds two letters “o” and “s,” and adds the generic top-level domain (“gTLD”)
“.org.” Past panels have found the
addition of letters and a gTLD to a complainant’s mark fail to adequately
distinguish the disputed domain name. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000)
(finding that <kelsonmd.com> is identical or confusingly similar to the
complainant’s federally registered service mark, KELSON); see also America Online, Inc. v. Tencent Commc’ns
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that
<oicq.net> and <oicq.com> are confusingly similar to the
complainant’s mark, ICQ); see also Jerry Damson, Inc. v.
Accordingly, the Panel finds Respondent’s <googleos.org> domain name is confusingly similar to
Complainant’s GOOGLE mark.
Complainant alleges that Respondent
has no rights or legitimate interests in the disputed 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 and Respondent has failed to submit a timely
Response to these proceedings in accordance with Rule 5.[2]
See
Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006)
(finding the “complainant must first make a prima facie case that [the]
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show
it does have rights or legitimate interests.”); see also Hanna-Barbera
Prods., Inc. v. Entertainment 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). Nevertheless, the Panel will examine the
record to determine if Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges Respondent is not commonly known by the <googleos.org> domain name. Complainant provides the WHOIS information for the disputed domain name listing Respondent as “Aloysius Thevarajah.” Complainant emphasizes that Respondent has not provided evidence that it is commonly known by the disputed domain name and Complainant asserts that Respondent is not authorized to use the GOOGLE mark. Because Respondent has not established it is commonly known by the disputed domain name, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant has established that Respondent uses the <googleos.org> domain name to resolve to a parked website that contains third-party hyperlinks unrelated to Complainant and Complainant’s search-engine services. It is reasonable to assume that Respondent profits from click-through fees. The Panel finds that Respondent’s 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 or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
Respondent argues Godaddy Inc. parks the
website resolving from the <googleos.org>
domain name. Respondent contends Godaddy
Inc. receives the click-through fees, if any.
Even assuming this unsupported assertion were true, Respondent, as the
owner of the parked domain name, is responsible for the content on the website
under Policy ¶ 4(a)(ii). See State Farm Mutual Auto. Insr.
The record indicates that the <googleos.org> domain name resolves to a parked website that features hyperlinks to third-parties unrelated to Complainant. The Panel assumes that Respondent receives click-through fees from the aforementioned hyperlinks. Moreover, it is likely that Internet users may become confused as to Complainant’s sponsorship of or association with the disputed domain name and resolving website. Respondent undoubtedly profits from this confusion. This use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleos.org>
domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 31, 2009
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National
Arbitration Forum
[1] Respondent’s claim, without any factual support
whatsoever, that the domain name was registered “for the purpose of [a]
community service project,” which is “four years [in] duration” and “is in
launching phase within [a] couple of months,” is lacking in credibility.
[2]
Respondent’s Response was submitted only in electronic format prior to the
Response deadline; a hard copy was received subsequent to the Response
deadline. The National Arbitration Forum
does not consider the Response to be in compliance with ICANN Rule 5. The Panel, in its discretion, has chosen not
to consider the Response. See Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit
a hard copy of the response and its failure to include any evidence to support
a finding in its favor placed the respondent in a de facto default
posture, permitting the panel to draw all appropriate inferences stated in the
complaint).
Nevertheless, the Panel has considered whether the Complainant has
established all of the elements of Paragraph 4(a) of the Policy.