Google Inc. v Baryt c/o Sexshopturkiye
Claim Number: FA0912001297483
Complainant is Google
Inc. (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googleerotikshop.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2009.
On December 8, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <googleerotikshop.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@googleerotikshop.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 namebe transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googleerotikshop.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleerotikshop.com> domain name.
3. Respondent registered and used the <googleerotikshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., operates an Internet search
service as well as other online products and services. Complainant holds many registrations of the
GOOGLE mark in multiple countries, including several with the United States
Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 2,806,075 issued
Respondent, Baryt c/o Sexshopturkiye, registered the <googleerotikshop.com> domain name on April 11, 2007. The disputed domain name resolves to a website displaying adult-oriented content and selling adult-oriented products.
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 has provided evidence of the registration of its
GOOGLE mark with the USPTO. The Panel
finds this is evidence Complainant has established rights in its GOOGLE mark
pursuant to Policy ¶ 4(a)(i) via its multiple registrations of the mark
including the USPTO (e.g., Reg. No.
2,806,075 issued
Respondent’s <googleerotikshop.com> domain name
includes Complainant’s GOOGLE mark, the phrase “erotik shop,” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds neither of these additions contribute a
distinguishing feature to the disputed domain name from the mark. Thus the Panel finds the disputed domain name
is confusingly similar to the mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Initially under Policy ¶ 4(a)(ii),
Complainant must show Respondent does not have any rights or legitimate
interests in the disputed domain name. Once Complainant has made a prima
facie case, the burden shifts to Respondent to show that it does have
rights or legitimate interests as provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
There is no evidence in the record suggesting that
Respondent is commonly known by the disputed domain name. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the GOOGLE
mark, and the WHOIS information identifies Respondent as “Baryt c/o
Sexshopturkiye.” Therefore, the Panel
finds Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s <googleerotikshop.com> domain name resolves to a website displaying adult-oriented content and selling adult-oriented products. The Panel finds Respondent’s use of the confusingly similar disputed domain name for adult-oriented purposes is not a bona fide offering of goods and service under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The website resolving from the <googleerotikshop.com> domain name displays adult-oriented content and sells adult-oriented products. Respondent presumably profits from the sales of these adult-oriented products. The Panel finds Respondent’s use of the confusingly similar domain name to profit from Internet users seeking Complainant’s products or services constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent presumably profited from this use. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Furthermore, the disputed domain name resolves to a website that displays adult-oriented content. The Panel finds Respondent has incorporated Complainant’s mark into the disputed domain name, which displays adult-oriented content. The Panel finds this use is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <googleerotikshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 27, 2010
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