Google Inc. v. Julian Majid a/k/a
internetcloning.com
Claim Number: FA1005001325921
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 <googleadwords.us>,
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on May 21, 2010; the Forum received a hard copy of
the Complaint on May 21, 2010.
On May 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the Forum that
the <googleadwords.us> domain name is registered with GoDaddy.com, Inc. and that Respondent
is the current registrant of the name.
GoDaddy.com, Inc. has verified that Respondent is bound by the
GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 10, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 30, 2010 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 7, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Louis E. Condon as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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
1. Respondent’s <googleadwords.us> domain name is confusingly similar to Complainant’s GOOGLE mark and ADWORDS mark.
2.
Respondent does not have any rights or
legitimate interests in the <googleadwords.us> domain name.
3.
Respondent registered and used the <googleadwords.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Google Inc., provides search engine services, search
engine technology, and associated products and services. Complainant began using the GOOGLE mark in
1997. Complainant holds numerous
registrations with the United States Patent and Trademark Office (“USPTO”) for
the GOOGLE mark (e.g., Reg. No. 2,884,502
registered on September 14, 2004). In
addition, Complainant has made extensive use of the ADWORDS mark since 2000 in
connection with it Internet advertising services. Complainant also holds numerous registration with the USPTO for the ADWORDS mark (e.g., Reg. No. 2,794,616 registered on
December 15, 2003).
Respondent registered the <googleadwords.us> domain name on February 9, 2010. The disputed domain name resolves to a
website that offers services related to those offered by 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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant asserts rights in the GOOGLE mark
through its numerous registrations of this mark with the USPTO (e.g., Reg. No. 2,884,502 registered on
September 14, 2004). Complainant also asserts
rights in the ADWORDS mark through its registrations of this mark with the
USPTO (e.g., Reg. No. 2,794,616
registered on December 15, 2003). The
Panel finds these registrations sufficiently establish Complainant’s rights in
the GOOGLE and ADWORDS marks. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007) (“As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends Respondent’s <googleadwords.us>
domain name is confusingly similar
to its GOOGLE and ADWORDS marks. Respondent
fully incorporates each of Complainant’s marks in the disputed domain
name. Respondent then merely adds the
country-code top-level domain name (“cc-TLD”) “.us” to Complainant’s marks in
the disputed domain name. The Panel
finds Respondent’s addition of a ccTLD does not distinguish the disputed domain
name from Complainant’s marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where respondent combined the complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Europcar Int’l SA v. New Media Research in
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
According to Policy
¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent
lacks rights or legitimate interests in the <googleadwords.us> domain
name. The burden then shifts to
Respondent to prove it has rights or legitimate interests in the disputed
domain name. The Panel may view
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights or legitimate interests under Policy ¶ 4(a)(ii). 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 UDRP ¶
4(a)(ii), and then the burden shifts to [the] respondent to show it does have
rights or legitimate interests.”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (holding that, where the complainant has asserted that the respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on the respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”); 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.”). Despite Respondent’s failure to respond, the
Panel will examine the record to determine whether Respondent has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <googleadwords.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts it has not authorized or licensed Respondent to use any of its trademarks in any way. In addition, the WHOIS information lists “Julian Majid a/k/a internetcloning.com” as the registrant of the disputed domain name. Based on the evidence in the record, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant contends Respondent’s <googleadwords.us> domain name resolves to a website that offers services related to those offered by Complainant. In particular, Respondent features services that utilize Complainant’s ADWORDS program. Respondent presumably profits from this use of the disputed domain name. Accordingly, the Panel finds the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
On March 26, 2010, Complainant emailed
Respondent explaining its rights and requesting transfer of the disputed domain
name. Respondent offered to sell the
disputed domain name to Complainant in a reply it sent on April 13, 2010. The Panel finds this offer to sell the disputed
domain name indicates Respondent’s lack of rights and legitimate interests
under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007)
(concluding that a respondent’s willingness to sell a domain name to the
complainant suggests that a respondent has no rights or legitimate interests in
that domain name under UDRP ¶ 4(a)(ii)); see
also Am. Nat’l Red Cross v. Domains,
FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful holder
of the RED CROSS mark.”).
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
The Panel infers that the amount Respondent
was willing to sell the disputed domain name for is in excess of Respondent’s
out-of-pocket registration costs.
Subsequently, the Panel finds Respondent’s offer to sell the disputed
domain name to Complainant is evidence of registration and use in bad faith
under Policy ¶ 4(b)(i). See
Respondent’s disputed domain name diverts Internet users seeking Complainant’s products and services to Respondent’s competing website. The Panel finds this behavior disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
As previously discussed, Respondent’s <googleadwords.us>
domain name is confusingly similar
to Complainant’s GOOGLE and ADWORDS marks.
Furthermore, Respondent seeks to profit from the <googleadwords.us>
domain name by offering a program for
sale that directly competes with Complainant’s ADWORDS product. The Panel finds Respondent intentionally
attempted to attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with the Complainant's marks as
to the source, sponsorship, affiliation, or endorsement of its website or of a
product or service on its website. Therefore, the Panel finds this further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (finding that the respondent’s use of the <saflock.com>
domain name to offer goods competing with the complainant’s illustrates the
respondent’s bad faith registration and use of the domain name, evidence of bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <googleadwords.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 13, 2010
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