national arbitration forum

 

DECISION

 

Google Inc. v. Cathy Isaacson

Claim Number: FA1004001316889

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia of Fenwick & West LLP, California, USA.  Respondent is Cathy Isaacson (“Respondent”), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qooglesearch.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 1, 2010.

 

On April 4, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <qooglesearch.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@qooglesearch.com.  Also on April 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On May 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <qooglesearch.com>, is confusingly similar to Complainant’s GOOGLE mark.

 

2.      Respondent has no rights to or legitimate interests in the <qooglesearch.com> domain name.

 

3.      Respondent registered and used the <qooglesearch.com> 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 January 21, 2010.  Respondent’s disputed domain name resolves to a website that imitates Complainant’s official website and offers search engine services in direct competition with 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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant obtained multiple trademark registrations for the GOOGLE mark with the USPTO (e.g., Reg. No. 2,884,502 issued September 14, 2004).  The Panel finds that Complainant established rights in the GOOGLE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).

 

Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name contains a misspelled version of Complainant’s GOOGLE mark, adds the term “search,” and adds the generic top-level domain (“gTLD”) “com.”  The Panel finds that a disputed domain name that contains a misspelled version of a complainant’s mark fails to create a distinguishing characteristic but instead produces a confusing similarity between the disputed domain name and the complainant’s mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). 

 

In addition, the Panel finds that the term “search,” when added to Complainant’s GOOGLE mark in the disputed domain name, also creates a confusing similarity between Complainant’s mark and the disputed domain name because the term “search” has an obvious relationship to Complainant’s offering of search engine services.  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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).  Lastly, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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).  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name.  Complainant is required to produce a prima facie case to support its allegations and once it does so, the burden of proof shifts to Respondent to prove it has such rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant made a prima facie case.  Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  The Panel, however, still examines the record to determine whether the record suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  As proof, Complainant offers the WHOIS information, which lists the registrant as “Cathy Isaacson.”  The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also alleged that Respondent’s disputed domain name resolves to a website that offers search engine services that directly compete with Complainant’s business.  The Panel finds that Respondent’s use of the disputed domain name does not represent 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).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Respondent’s disputed domain name also resolves to a website that passes itself off as being associated with Complainant.  The Panel finds that Respondent’s attempt to pass itself off as an entity associated with Complainant is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) in the disputed domain name.  See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also alleges that Respondent registered and used the disputed domain name in bad faith.  The Panel finds that Respondent’s registration and use of the disputed domain name to operate a website that attempts to create the impression of being associated with Complainant and offer search engine services in direct competition with Complainant constitutes a disruption of Complainant’s business.  These circumstances support findings of  bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s GOOGLE mark.  Respondent offers search engine services in direct competition with Complainant, which is further evidence of bad faith.  Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use of the disputed domain name constitutes bad faith registration and use.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

 

Lastly, Complainant contends that Respondent is using the disputed domain name to pass itself off as being associated with Complainant by displaying Complainant’s GOOGLE mark and usuing a logo resembling that at Complainant’s website, when it is in fact leading to Respondent’s commercial website. The Panel finds that this circumstance also constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <qooglesearch.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 17, 2010

 

 

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