Google Inc. v. Rocco Mancini
Claim Number: FA1005001324487
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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
firstname.lastname@example.org. Also on
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to 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.
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.
(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.
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.
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.
Dated: June 23, 2010
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