Google Inc. v. Rocco Mancini
Claim Number: FA1005001324487
PARTIES
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwick & West LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atgoogle.com>, registered with GoDaddy.com,
Inc.
PANEL
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.
Hon. Sir Ian Barker as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On May 14, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 3, 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@atgoogle.com. Also on
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is a
The Google mark has been widely promoted amongst the general conputing
public since 1997 and the mark and name symbolize its goodwill. The Complainant owns numerous
The disputed domain name was registered on
Correspondence ensued between the Complainant and the Respondent seeking
transfer of the disputed domain name but the Respondent did not respond as
promised by the end of the week of
The Google name merely places the generic term “at” before the Google
mark and is confusingly similar to the marks in which the Complainant has
rights.
The Complainant has not authorised the Respondent to register or use
the disputed domain name which is currently inactive. None of the exceptions under Paragraph 4(c) of
the Policy applies to the Respondent.
The Respondent registered and is using the disputed domain name in bad
faith. It is highly unlikely that
anybody acquiring a domain name would have not heard of the Complainant’s mark
and the fame of the Google name. The
disputed domain name is inactive and there must be an intention to profit from
the likely confusion of internet users.
B. Respondent
The Respondent purchased the disputed domain name at auction on e-Bay
which firm does not allow sellers to list any items that would infringe upon
trademarks. There was, therefore, no
assumption of intent to infringe. The
disputed domain name has not been used in any manner to infringe upon a
trademark.
The trademark does not allow the owner to “claim any attached word to it and lay claim to it as being the same as
their trademark”. Case law supports
this.
C. Additional Submissions of
Complainant
It is well-established that a domain name as been “registered” within
the meaning of the Policy where it has been acquired from a prior
registrant. The manner in which and the
vendor from whom the Respondent acquired the disputed domain name is
irrelevant. E-bay’s website provides
suitable warnings against possible infringement of trademarks. Non-use of a domain name can demonstrate a
lack of rights and bad faith.
D. Additional Submissions of Respondent
He did not originally register the disputed domain name. There is no basis to infer that the
Respondent intended to infringe a trademark.
E-bay’s policy is against selling infringing names.
Bad faith non-use is solely relevant in cyber-squatting situations of
which this is not one.
The
FINDINGS
(a) The disputed domain name is confusingly
similar to the Complainant’s trademarks.
(b) The Respondent has no rights or legitimate
interest in the disputed domain name.
(c) The disputed domain name was registered and
is being used 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 that the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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.
Clearly, the Complainant has rights in the
name “Google” and owns numerous trademarks for the name. The name must be one of the most well-known
in the world. The addition of a
preposition like “at” before the trademark is of no consequence. The word “Google” is dominant in the disputed
domain name and in the mark.
The disputed domain name is clearly
confusingly similar to the Complainant’s mark.
The case cited by the Respondent is irrelevant to a complaint under the
Policy. The Complainant is not trying to
enforce a trademark for the expression “atgoogle”.
The Respondent’s claim that there is no enforceable
right to add a word to a trademark is inapplicable to a complaint under the
Policy. There are numerous cases under
the Policy where prefixes or suffixes to a registered trademark have been held
to make a domain name confusingly similar when compared with the trademark.
Accordingly, the Complainant has proved the
first limb of Paragraph 4(a) of the Policy.
As was aptly noted in Google Inc v Mikel M Frierje, FA 0102609 (Nat. Arb.
Forum Jan. 11, 2002), “Any respondent would be hard-pressed to show
that it had rights or legitimate interests in the domain name because the Complainant’s
Google mark is so well-known.”
Moreover, the disputed domain name is
currently inactive. Such inactivity
supports the Complainant’s position that the Respondent has no legitimate
rights or interest in the disputed domain name.
The Complainant gave the Respondent no rights to use the disputed domain
name.
The onus is on the Respondent to prove that
he comes within one or other of the exceptions in Paragraph 4(c) of the
Policy. He has not done this and,
therefore, the Complainant has satisfied the second limb of Paragraph 4(a) of
the Policy.
The Respondent must have been deemed to have
known of the fame of the Google mark at the time he acquired the disputed
domain name by purchase which is deemed to be the date of its registration for
the purposes of the Policy. Anyone who
uses a computer would know about Google.
The easily-inferred knowledge that the Respondent knew about the
Complainant and its famous mark at the date of registration makes bad faith
registration an easy conclusion to reach.
E-Bay cannot be held responsible for the Respondent’s decision to buy a
domain name, including a replication of one of the most famous marks of the 21st
century.
The disputed domain name was registered by
the Respondent only in January 2009, well after the Google trademarks were
registered. Inactivity of the disputed
domain name indicates that it is being used in bad faith. In Twentieth Century Fox Film Corporation v Rissel, FA 0093761 (Nat. Arb. Forum May 18,
2000) it was said: “Use in bad faith can be inferred from the
totality of the circumstances even where a registrant has done nothing more
than register names.” See also
The totality of circumstances – notably the
fame of the Google mark plus the confusing similarity of the disputed domain
name with that mark – combined with the inactivity – makes bad faith use also
easy to infer. The Complainant has,
therefore, established the third limb of Paragraph 4(a) of the Policy.
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 <atgoogle.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Sir
Dated: June 23, 2010
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