national arbitration forum

 

DECISION

 

Google Inc. v. P-BYH3596 c/o Please use Http://www.hide-domain-whois.com c/o Bu alan adinin whois detaylari gizlenmistir Hidden contact details.

Claim Number: FA1001001304062

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Meredith Pavia, California, USA.  Respondent is P-BYH3596 c/o Please use Http://www.hide-domain-whois.com c/o Bu alan adinin whois detaylari gizlenmistir Hidden contact details. (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleceviri.net>, registered with Key-Systems Gmbh.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2010.

 

On January 21, 2010, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <googleceviri.net> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name.  Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 January 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@googleceviri.net by e-mail.

 

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

 

On February 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <googleceviri.net> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <googleceviri.net> domain name.

 

3.      Respondent registered and used the <googleceviri.net> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Google Inc., began operation in 1997.  Complainant offers search engine and information services.  Complainant offers a range of other services that assist in providing information to Internet users, such as translation services.  Complainant offers these services under its GOOGLE mark and on its website resolving from the <google.com> domain name.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GOOGLE mark (e.g., Reg. No. 2,884,502 issued September 14, 2004).

 

Respondent registered the disputed domain name on February 5, 2009.  The disputed domain name resolves to a website featuring translation software that competes with Complainant’s translation services.  Respondent has offered to sell the disputed domain name for 1,500 Turkish Lira with an additional fee of 1,000 Lira.  After Complainant offered to pay Respondent’s registration costs of 61 Lira, Respondent demanded $1,000,000.

 

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 has registered the GOOGLE mark with the USPTO (e.g., Reg. No. 2,884,502 issued September 14, 2004).  Respondent operates in Turkey, but the Panel finds that the Policy does not require the mark to be registered in the country that Respondent operates in.  Therefore, the Panel finds that Complainant has established rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i) through Complainant’s USPTO registration of the mark.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <googleceviri.net> domain name contains Complainant’s entire GOOGLE mark and simply adds the descriptive term “ceviri,” which is Turkish for “translation” and refers to Complainant’s translation services, and the generic top-level domain (“gTLD”) “.net.”  The Panel finds the additions of a descriptive term and a gTLD inadequately distinguish the disputed domain name from Complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).  Thus, the Panel finds that the <googleceviri.net> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).

 

Therefore, the Panel finds that Complainant has established the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent does not have any rights or legitimate interests in the <googleceviri.net> domain name.  The burden shifts to the respondent to prove it does have rights or legitimate interests when a complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).

 

Complainant emphasizes that Respondent is not authorized to use the GOOGLE mark.  Respondent failed to offer evidence showing Respondent is commonly known by the <googleceviri.net> domain name.  Complainant provides the WHOIS information for the record which does not provide any evidence that Respondent is commonly known by the disputed domain name.  There is no evidence on the record showing Respondent is commonly known  by the disputed domain name.  Therefore, the Panel finds that Respondent has not established it is commonly known by the <googleceviri.net> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Respondent uses the <googleceviri.net> domain name to resolve to its own website where Respondent offers translation software that competes with Complainant’s translation services.  The Panel finds Respondent’s use of a confusingly similar disputed domain name to resolve to a website offering competing products is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

After Complainant’s initial contact with Respondent to advise Respondent of Complainant’s rights in the GOOGLE mark, Respondent offered to sell the <googleceviri.net> domain name to Complainant for 1,500 Turkish Lira with an additional fee of 1,000 Lira.  Complainant counter offered by offering to pay Respondent’s registration costs of 61 Lira.  Respondent then demanded 1,000,000 U.S. dollars.  The Panel finds Respondent’s attempt to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Thus, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent offered to sell the <googleceviri.net> domain name to Complainant for 1,500 Turkish Lira with an additional fee of 1,000 Lira.  After Complainant offered to pay Respondent’s registration costs of 61 Lira, Respondent demanded 1,000,000 U.S. dollars.  The Panel infers this amount is greater than Respondent’s out-of-pocket costs for the registration of the disputed domain name.  The Panel finds Respondent’s registration and use of the disputed domain name for the purpose of selling it for more than Respondent’s out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

 

Respondent’s <googleceviri.net> domain name resolves to Respondent’s website which competes with Complainant.  Internet users, specifically Internet users from Turkey, intending to utilize Complainant’s translation services, may instead use Respondent’s competing translation software because of Respondent’s use of the confusingly similar disputed domain name.  Therefore, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s translation and search engine business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant alleges that Respondent competes with Complainant through the use of the website resolving from the  <googleceviri.net> domain name.  The Panel presumes that Respondent profits from the use of the disputed domain name.  Internet users interested in Complainant and Complainant’s translation services may become confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website, and featured translation software.  Respondent is attempting to profit from this confusion.  The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <googleceviri.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  March 8, 2010

 

 

 

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