Google Inc. v. Armando
Martinez aka SEO Expert Marketing
Claim Number: FA1004001319203
PARTIES
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlelistings.com>, registered with
Dynadot, LLC, and <googlebusinesslisting.com>
and <googlebusinesslistings.com>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and that to the best of their knowledge they have no known conflict
in serving as Panelist in this proceeding. David Safran, Esq., Chairs the Panel. Hon. John Upchurch and Hon. Carolyn Marks
Johnson are Panelists. Judge Johnson writes for the majority.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically April 14, 2010.
On April 15, 2010, Dynadot, LLC confirmed by e-mail to the
National Arbitration Forum that the <googlelistings.com> domain name is
registered with Dynadot, LLC and that the Respondent is the current registrant
of the name. On April 15, 2010, GoDaddy.com,
Inc. confirmed by e-mail to the National Arbitration Forum that the domain
names <googlebusinesslisting.com> and <googlebusinesslistings.com> are registered with GoDaddy.com, Inc. and that Respondent is the
current registrant of the names. GoDaddy.com, Inc. and Dynadot, LLC both verified
that Respondent is bound by the GoDaddy.com,
Inc. and Dynadot, LLC registration agreements 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 21, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 11, 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@googlelistings.com, postmaster@googlebusinesslisting.com and
A timely Response was received and determined to be complete on May 11, 2010.
The Panel reviewed the Response and took it into consideration in
reaching the final result.
A timely Additional Submission was filed May 17, 2010 and complied with
Supplemental Rule 7. The Panel reviewed
this document and took it into consideration in reaching its result.
On May 19, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David Safran, Esq., Chair, and Hon. John Upchurch
and Hon. Carolyn Marks Johnson as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. The domain names that Respondent registered, <googlelistings.com>, <googlebusinesslisting.com>,
and <googlebusinesslistings.com>
are identical and/or confusingly similar to Complainant’s GOOGLE mark.
2. Respondent has no rights to or
legitimate interests in the disputed domain names.
3. Respondent registered and
used the disputed domain names in bad faith.
B. Respondent makes the following points in
Response:
1. At the time the Complaint was filed, the disputed domain names were not confusingly similar to any Google-related goods or services.
2. Complainant provides "Guidelines for Third Party Use of Google Brand Features," which includes a list of registered trademarks and generic terms to those seeking to use the GOOGLE mark in their business.
3. The disputed domain names, <googlelistings.com>, <googlebusinesslisting.com>, and <googlebusinesslistings.com> were not listed as GOOGLE trademarks nor as suggested generic terms as of the date of the filing of the Complaint.
4. Numerous non-Google owned websites exist that contain the GOOGLE mark in their URLs and, as a result, the general public has become accustomed to non-Google affiliated companies marketing websites containing the GOOGLE mark in their URLs.
5. On February 5th, 2010, Respondent urges that it made a due diligent attempt to propose a new business venture to Complainant, which assigned the number 595533326 to the request; but that Complainant never replied to this request.
6. Respondent thereafter urges that it appropriately registered and used the disputed domain names; and claims rights under its own interpretation of documents submitted to it by Complainant.
7. Respondent claims that Complainant “acquiesced” to Respondent’s rights in the mark.
8. Respondent urges that the overwhelming evidence supports a conclusion that Respondent did not register the domain names in bad faith, despite the fact that three are involved in this dispute and that some twenty others were registered that included the GOOGLE mark.
C. Additional Submissions
Complainant filed a timely Additional Submission May 17, 2010, that
complied with Supplemental Rule 7. In
its Additional Submission, Complainant responded to Respondent’s allegations of
consent to use the GOOGLE mark and attached the Guidelines for those who would
include a GOOGLE mark at their own sites.
The Panel reviewed this document and took it into consideration in
reaching its result.
FINDINGS
Complainant established
rights in the GOOGLE mark by virtue of its multiple trademark registrations
with the United States Patent and Trademark Office (“USPTO”) and various
trademark authorities worldwide.
The domain names that
Respondent registered are confusing similar to Complainant’s protected mark.
Respondent did not show
rights to use the GOOGLE mark in the disputed domain names.
Respondent registered and
used multiple disputed domain names containing the GOOGLE mark in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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 asserts that it has rights in the GOOGLE
mark by virtue of its multiple trademark registrations with the United States
Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 2,806,075 issued Jan. 20, 2004) and various trademark authorities
worldwide, such as the Trade Marks Registry Intellectual Property Department of
the Government of Hong Kong (e.g.,
No. 300,540,729 issued Dec. 2, 2005).
The Panel finds that a USPTO trademark registration conclusively proves
Complainant’s rights in the GOOGLE mark according to Policy ¶ 4(a)(i). See Automotive
Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006)
(finding that the Complainant’s federal trademark registration established its
rights in the mark under Policy ¶ 4(a)(i)); 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 contends in its Complaint and in its
Additional Submission that Respondent’s <googlelistings.com>, <googlebusinesslisting.com>
and <googlebusinesslistings.com> disputed domain names are
confusingly similar to Complainant’s GOOGLE mark because each disputed domain
name incorporates Complainant’s full mark, adding only one or more of the
generic terms “listings,” “business” or “listing” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of generic terms does not prevent confusing similarity under
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16,
2001) (finding that the respondent’s domain names were confusingly similar to
Complainant’s GOOGLE mark where the respondent merely added common terms such
as “buy” or “gear” to the end). The
Panel also finds that the addition of a gTLD is not relevant when making a
determination of confusing similarity, according to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel therefore finds that Respondent’s disputed domain names <googlelistings.com>, <googlebusinesslisting.com> and <googlebusinesslistings.com> are confusingly similar to Complainant’s GOOGLE mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶
4(a)(i).
Complainant must first make a prima
facie case showing that Respondent lacks rights and legitimate interests in
the disputed domain names under Policy ¶ 4(a)(ii).
Once Complainant does so, the burden of proof then shifts to Respondent to show
that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant asserts that Respondent is not
commonly known by the disputed domain names because the names of the
registrants of the disputed domain names listed in the WHOIS information are
“SEO Expert Marketing” and “Armando Martinez,” neither of which refer to the
disputed domain names. The Panel finds
that the failure of the WHOIS information to identify the registrants as the
disputed domain names indicates that Respondent is not commonly known by the
disputed domain names and therefore does not have rights or interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed 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 alleges that the <googlebusinesslisting.com> disputed domain name resolves to a parked website displaying click-through advertisements that financially benefit Respondent. The Panel finds that using the disputed domain name in connection with such a click-through advertisement site is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant argues that the <googlelistings.com> and <googlebusinesslistings.com> disputed domain names resolve to commercial websites that offer services similar to Complainant’s search engine services. The Panel finds that Respondent’s effort to use the disputed domain names to divert Internet users to Respondent’s website for its own financial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use consistent with Policy ¶¶ 4(c)(i) or 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts
in its Additional Submission that, contrary to Respondent’s argument,
Respondent’s proposal of a new business venture to Complainant and
Complainant’s “approval” of the <googlebusinesslistings.com>
disputed domain name as a sponsored link on the <google.com> domain name
do not entitle Respondent to use or register domain names containing
Complainant’s mark. Complainant further
asserts that the actions do not signal any implied or explicit consent on the
part of Complainant for Respondent’s use of Complainant’s mark. The Panel finds that Respondent’s actions in
submitting a business proposal and Complainant’s actions in approving the <googlebusinesslistings.com> domain
name as a sponsored link do not grant Respondent rights and legitimate
interests in the disputed domain name.
In fact, as set out above, Respondent alleges that it attempted to
propose a new business venture to Complainant.
Respondent asserts that after two weeks without a response, it submitted
the <googlebusinesslistings.com>
disputed domain name to Complainant for approval as a sponsored link, which it
subsequently received. Respondent
contends that this “approval” from Complainant signals that Complainant has
given Respondent the necessary rights to use and advertise the <googlebusinesslistings.com> disputed
domain name and also proves that Respondent’s operation of the disputed domain
name is a legitimate fair use. The Panel
notes that even Respondent referred to Complainant’s “acquiescence” to
Respondent’s alleged offers to carry out some joint venture. The Panel finds
that Respondent’s interaction with Complainant and Complainant’s alleged assent
to Respondent’s activities and use of Complainant’s mark did not give
Respondent rights and legitimate interests in the <googlebusinesslistings.com> disputed domain name. This is further supported by exhibits that
show that once Complainant became aware of Respondent’s registration and use of
the disputed domain names and notified Respondent that it had not consented to
the use being carried out by Respondent, Respondent made repeated promises to
transfer the disputed domain names but made no effort to do so.
The Panel finds that Respondent has no rights
or legitimate interests in the disputed domain names; Complainant satisfied the
elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has a
pattern of registering domain names that infringe on Complainant’s mark in
violation of Policy ¶ 4(b)(ii). Complainant argues that three disputed domain
names are involved in the instant proceeding.
Complainant also contends in its Additional Submission that Respondent
has registered twenty-one other domain names containing Complainant’s GOOGLE
mark. The Panel finds that Respondent’s
pattern of registering multiple domain names that appropriate Complainant’s
mark supports a finding of bad faith registration and use pursuant to Policy ¶
4(a)(ii). See
Armstrong Holdings, Inc. v.
JAZ Assocs.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks); see
also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23,
2000) (holding that registration of numerous domain names is one factor in
determining registration and use in bad faith).
Complainant alleges that Respondent uses the
disputed domain names in order to attract Internet users to Respondent’s
websites for Respondent’s commercial gain.
Complainant asserts that the <googlebusinesslisting.com>
disputed domain name resolves to a parked website featuring click-through links
that compensate Respondent financially each time they are clicked. The Panel finds that when Respondent uses a
disputed domain name containing Complainant’s mark to operate a click-through
website for Respondent’s own commercial gain, such conduct is evidence of and
supports findings of bad faith registration and use under Policy ¶
4(b)(iv). See
Complainant contends
that Respondent’s <googlelistings.com>
and <googlebusinesslistings.com>
disputed domain names also attempt to attract Complainant’s intending customers
for Respondent’s commercial gain as both disputed domain names resolve to
commercial sites offering Respondent’s search engine services that are similar
to those offered by Complainant. The
Panel finds that Respondent’s activities to attract Internet users for
commercial gain demonstrate evidence of and support findings of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting).
Complainant further asserts that Respondent has placed altered versions of Complainant’s screenshots on its <googlebusinesslistings.com> disputed domain name, despite the fact that Complainant only gives permission for use of unaltered screenshots for instructive or illustrative purposes. The Panel find that this impermissible use of screenshots is further evidence of and supports findings of bad faith registration and use according to Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s failure to follow through with its agreement with Complainant to transfer the disputed domain names voluntarily to Complainant reveals bad faith registration. The Panel finds that Respondent’s behavior in this regard supports findings of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that while the Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, and these are illustrated here, that additional factors affect the outcome in this case. The list under Policy ¶ 4(a)(iii) merely illustrates possible situations that demonstrate bad faith. The Panel also looks to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. Given the totality of Respondent’s conduct here and the multiple registrations using Complainant’s protected mark, Respondent acted in bad faith in registering domain names using a protected mark that it knew was owned by another and in using those domain names for its own purposes and gain. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
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 <googlelistings.com>,
<googlebusinesslisting.com>, and <googlebusinesslistings.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist Hon. John Upchurch, Panelist
Dated: June 2, 2010.
CONCURRING OPINION
While this Panelist agrees with the decision to transfer the domains
for substantially the same reasons reached by the majority, this Panelist
disagrees with the majority as to the potential impact of the Complainant
having approved the <googlebusinesslistings.com>
disputed domain name as a sponsored link on the <google.com> domain name
as well as Complainant’s position that the fact that it uses a substantially
automated system somehow makes it excusable or irrelevant that such approval is
given. This Panelist believes that such an “inadvertent” (more properly
negligent) circumstance is not comparable to a party's inadvertent release of
"privileged" documents and the ability that the courts recognize to
recall such documents and to impose a seal. In such a case, the receiving
attorney knows that a mistake has likely occurred and is obligated to notify
opposing counsel of receipt of the document, and to return or destroy it upon
request, and most certainly has no good faith basis to use the document. This is far from the situation where an applicant
receives the approval that it has requested. I would more properly equate this
situation with that of a good faith purchaser for value who has no knowledge
of, e.g., an unrecorded transfer of property it has purchased. Complainant has
knowledge of the shortcomings of its automated process and could either fix the
program or have a final manual review of approvals before they go out. Thus, in
the case of a party that in good faith acts upon the approval and makes a
significant investment in reliance upon it, it is Complainant that must bear the
consequences of its approval.
However, having stated the above,
this Panelist cannot find a basis for equating Respondent to the type of
purchaser that has been described above.
There is no evidence of any significant investment in reliance upon the approval.
To the contrary, the domain is merely used for a directory site of the type
used for generating “click-through” revenue as opposed to being used as an
element of a “true” business. Moreover, the Respondent’s practice of registering numerous other domain names
containing Complainant’s GOOGLE mark, which were not found to be acceptable,
makes it difficult to equate this Respondent with the type of good faith
purchaser described in the preceding paragraph, but rather Respondent merely
appears to be a party who is trying to take advantage of that which it should
have recognized to be an error, and in this case, one that did not result
in any substantial investment in
reliance thereon.
Accordingly, this
Panelist agrees with the Decision to transfer the domain.
David S. Safran, Chair
Dated: June 2, 2010.
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