Google
Inc. v. Haishan Zhao a/k/a
Claim Number: FA1006001330293
Complainant is Google
Inc (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googledns.org>, registered with Xin Net Technology Corporation.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2010. The Complaint was submitted in both Chinese and English.
On June 17, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <googledns.org> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 24, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 14, 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@googledns.org. Also on June 24, 2010, the Chinese language 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 July 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin
as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googledns.org> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googledns.org> domain name.
3. Respondent registered and used the <googledns.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., provides search engine services on the Internet that allows Internet users to search for content in many different languages. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) and in many countries/regions around the world, including the following:
USPTO
GOOGLE 3,570,103 issued Feb. 3, 2009;
GOOGLE 3,140,793 issued Sept. 12, 2006;
GOOGLE 2,954,071 issued May 24, 2005;
GOOGLE 2,806,075 issued Jan. 20, 2004;
GOOGLE 2,884,502 issued Sept. 14, 2004;
GOOGLE 4,474 issued July 21, 2006;
GOOGLE 27,552 issued May 8, 2006;
GOOGLE 30,054,079 issued Dec. 2, 2005;
GOOGLE 1,224,817 issued Aug. 16, 2006; and
Republic of the
GOOGLE 4-2003-008894 issued Feb. 10, 2006.
Respondent, Haishan Zhao a/k/a
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 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.
Complainant owns numerous trademark registrations with the USPTO and in many countries/regions around the world, including the following:
USPTO
GOOGLE 3,570,103 issued Feb. 3, 2009;
GOOGLE 3,140,793 issued Sept. 12, 2006;
GOOGLE 2,954,071 issued May 24, 2005;
GOOGLE 2,806,075 issued Jan. 20, 2004;
GOOGLE 2,884,502 issued Sept. 14, 2004;
GOOGLE 4,474 issued July 21, 2006;
GOOGLE 27,552 issued May 8, 2006;
GOOGLE 30,054,079 issued Dec. 2, 2005;
GOOGLE 1,224,817 issued Aug. 16, 2006; and
Republic of the
GOOGLE 4-2003-008894 issued Feb. 10, 2006.
The Panel finds that Complainant’s evidence of trademark registrations around the world, including with the USPTO, conclusively establishes Complainant’s rights in the GOOGLE mark for the purposes of Policy ¶ 4(a)(i), regardless of whether the mark is registered in the country of Respondent’s residence or business. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <googledns.org> domain name is confusingly
similar to Complainant’s GOOGLE mark because the disputed domain name
incorporates Complainant’s mark in full and adds the descriptive acronym “dns,”
which stands for “domain name system,” and the generic top-level domain name
(“gTLD”) “.org.” The Panel finds that adding a word, phrase, or, in this case,
an acronym that describes Complainant’s business activities does not
distinguish the disputed domain name from Complainant’s mark. See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see
also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095
(WIPO May 7, 2002) (finding that several domain names incorporating the
complainant’s entire EXPERIAN mark and merely adding the term “credit” were
confusingly similar to the complainant’s mark).
The Panel also finds that the gTLD “.com” has no effect on the Policy ¶
4(a)(i) analysis.
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 Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case before the burden transfers to Respondent to demonstrate its rights and legitimate interests. In this case, the Panel deems the evidence presented by Complainant establishes a sufficient prima facie case. Respondent, however, has not met its burden under Policy ¶ 4(a)(ii) because it has presented a Response to the Complaint. The Panel thus infers that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true as stated. See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). In the interest of fairness, however, the Panel decides to consider all the evidence presented in light of the Policy ¶ 4(c) to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <googledns.org> domain name. The WHOIS information for the disputed domain name lists the registrant as “haishan zhao,” a name which shows no relation to the disputed domain name. The Panel finds that the failure of the WHOIS information to nominally link Respondent to the disputed domain name indicates that Respondent is not commonly known by the disputed domain name and has no rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant argues that Respondent’s <googledns.org> domain name is not being actively used. Complainant asserts that the disputed domain name resolves to a website displaying a message that states, “This is the Kloxo Default Page.” The Panel finds that Respondent’s failure to make active use of the disputed domain name shows that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent’s <googledns.org> domain name is not
associated with an active website displaying original content. The Panel finds that Respondent’s non-use of
the disputed domain name demonstrates bad faith registration and use pursuant
to Policy ¶ 4(a)(iii).
See DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s
[failure to make an active use] of the domain name satisfies the requirement of
¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug.
30, 2000) (finding that the respondent made no use of the domain name or
website that connects with the domain name, and that [failure to make an active
use] of a domain name permits an inference of registration and use in bad
faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googledns.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court,
Dated: July 21, 2010
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