Google Inc. v. Anthonny c/o Network Service
Claim Number: FA1003001311155
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwick & West LLP,
REGISTRAR
The domain name at issue is <googleplaces.com>, registered with Onlinenic, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March
5, 2010, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of March 25, 2010 by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@googleplaces.com. Also on
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <googleplaces.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleplaces.com> domain name.
3. Respondent registered and used the <googleplaces.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., is an
internationally recognized leader in online research, mapping and information
services. 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 on
Respondent registered the <googleplaces.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.
Complainant owns several trademarks with the USPTO for its
GOOGLE mark (e.g., Reg. No. 2,884,502
issued on
Respondent’s <googleplaces.com>
domain name contains Complainant’s mark with the addition of the generic term
“places” and the generic top level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed
domain name is not distinguishable from Complainant’s mark under Policy ¶ 4(a)(i) where it contains Complainant’s mark combined with the
generic term “places” and the gTLD “.com.”
See Arthur Guinness Son & Co.
(
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <googleplaces.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. After Complainant has
produced a prima facie case the
burden of proof shifts to Respondent to show that it has rights or interests in
the disputed domain name. 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 Domtar, Inc. v. Theriault., FA
1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”). The Panel finds that the
Complainant has produced a prima facie
case. Due to the Respondent’s failure to
respond to these proceedings, the Panel may assume Respondent does not have any
rights or legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant has not granted Respondent permission to use its
mark and further asserts that Respondent is not commonly known by the disputed domain
name. Complainant notes that the WHOIS
information for the <googleplaces.com> domain name lists “Anthonny
c/o Network Services” as the registrant of the domain name. Further, Respondent offers no evidence to
show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respodent
does not have rights or legitimate interests in the <googleplaces.com>
domain name under 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).
Complainant also
maintains that Respondent’s use of the disputed domain name to display a
directory of third-party links of various websites and businesses is not a bona
fide offering of goods or services or a noncommercial or fair use. Complainant contends that Respondent is using
the confusingly similar domain name to divert Internet users to its directory
website in order to collect click-through fees for the links it displays. The Panel finds that Respondent’s use of the
confusingly similar disputed domain name to maintain a directory website with
third-party links to various businesses is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s disputed domain name should be considered to have been registered and used in bad faith. Complainant contends that Respondent’s use of the disputed domain name to maintain a website that displays third-party links to websites unrelated to Complainant, and presumably for financial gain, is evidence of bad faith. The Panel finds that Respondent’s use of the confusingly similar domain name to attract Internet users to its website that displays advertisements and third-party links to websites unrelated to Complainant, where it presumably collects click-through fees associated with those links, is evidence of bad faith registration and use pursuant to 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 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)).
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 <googleplaces.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 14, 2010
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