national arbitration forum

 

DECISION

 

Google Inc. v. Tobec Acquisitions

Claim Number: FA0911001296156

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, California, USA.  Respondent is Tobec Acquisitions (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.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.

 

Hon. Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 25, 2009.

 

On November 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  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 December 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 23, 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@ecogoogleit.com, postmaster@ecogoogleit.net, postmaster@ecogoogleit.biz, postmaster@ecogoogleit.info, and postmaster@ecogoogleit.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names are confusingly similar to Complainant’s GOOGLE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names.

 

3.      Respondent registered and used the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google Inc., provides search engine services and related products and services.  Complainant began operating its search engine in 1997.  Complainant has recently been ranked as the top search engine provider by multiple media outlets.  Complainant has also received awards for its technology and services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 issued January 20, 2004) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,410,931 issued June 15, 2007) for its GOOGLE mark.

 

Respondent registered the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names on March 25, 2009. The <ecogoogleit.com> domain name formerly resolved to a parked website and after receipt of a letter from Complainant now resolves to a website providing information on the environment.  The <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names currently resolve to a parked website featuring advertisements and hyperlinks not related to Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant registered its GOOGLE mark with the USPTO (e.g., Reg. No. 2,806,075 issued January 20, 2004) and the UKIPO (e.g., Reg. No. 2,410,931 issued June 15, 2007).  Therefore, the Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the MAPQUEST.COM mark through its registration of the mark with the USPTO and UKIPO.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant alleges Respondent’s <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names are confusingly similar to Complainant’s GOOGLE mark.  The disputed domain names add the generic term “eco,” add the letters “it,” and adds one of the generic top-level domain (“gTLD”) “.com,” “.net,” “.biz,” “.info,” or “.org.”  The Panel finds the additions of a generic term, letters, and a gTLD are insufficient to adequately distinguish the disputed domain name from Complainant’s mark.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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 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).  The Panel concludes Respondent’s <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names are confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names.  Once Complainant makes a prima facie case in support of 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 Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  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 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 asserts that Respondent is not authorized to use the GOOGLE mark.  Respondent failed to offer evidence showing Respondent is commonly known by the disputed domain names.  The WHOIS information provided by Complainant is not similar to the disputed domain names and there is no evidence on the record showing Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent formerly used the <ecogoogleit.com> domain name to resolve to a parked website.  Respondent likely received click-through fees from the hyperlinks and advertisements featured on the resolving website.  The Panel finds this use was not 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 names under Policy ¶ 4(c)(iii).  See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

 

Currently, the <ecogoogleit.com> domain name resolves to a website focusing on environmental issues.  Respondent made this change only after receipt of Complainant’s letter requesting the transfer of the disputed domain names.  The Panel finds this change in use of the disputed domain name is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).

           

Respondent uses the <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names to resolve to parked websites containing advertisements and hyperlinks unrelated to Complainant.  Respondent likely has received and continues to receive click-through fees from the advertisements and hyperlinks contained on the resolving websites.  Therefore, the Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  See supra Charles Letts & Co Ltd. v. Citipublications; see also supra Tercent Inc. v. Lee Yi.

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Before Complainant’s letter requesting a transfer of the disputed domain names, Respondent’s <ecogoogleit.com> domain name resolved to a parked website from which Respondent likely received click-through fees.  Internet users interested in Complainant may have become confused as to Complainant’s sponsorship of or affiliation with the disputed domain name and resolving website.  The Panel finds Respondent’s use of the <ecogoogleit.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

After receipt of Complainant’s letter requesting a transfer of the disputed domain names, Respondent altered the website resolving from the <ecogoogleit.com> domain name.  The disputed domain name currently resolves to a website featuring articles about environmental topics in relation to Complainant and other third parties.  The fact that Respondent changed the use of the disputed domain name after receiving notice from Complainant is evidence of bad faith under Policy ¶ 4(a)(iii).  See Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2nd Cir. 2000) cert. denied, 120 S. Ct. 2719 (2000) (finding bad faith where the domain name was not used until after litigation began and the domain name does not consist of the legal name of the party); see also Multi Time Machine, Inc. v. Air Florida c/o Domain Admin, FA 1287689 (Nat. Arb. Forum Nov. 20, 2009) (finding bad faith when Respondent used the <specialopswatches.com> domain name to host a parked website containing Complainant’s copyrighted image, but later altered the content on the resolving website after receiving notice from Complainant).

 

Respondent’s <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names currently resolve to a parked website featuring hyperlinks and advertisements to unrelated third parties.  Respondent likely receives click-through fees from these hyperlinks and advertisements.  Internet users attempting to utilize Complainant’s search engine services may become confused as to Complainant’s affiliation with or sponsorship of the disputed domain names, resolving website, and hyperlinks and advertisements.  The Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See supra MySpace, Inc. v. Myspace Bot; see also supra T-Mobile USA, Inc. v. utahhealth.

 

Therefore, the Panel concludes Policy ¶ 4(a)(i) has been satisfied.

 

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 <ecogoogleit.com>, <ecogoogleit.net>, <ecogoogleit.biz>, <ecogoogleit.info>, and <ecogoogleit.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  January 15, 2010

 

 

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