Google Inc. v. Bryan Lewis
Claim Number: FA1008001338498
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, of Fenwick & West LLP, California, USA. Respondent is Bryan Lewis (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googledns.net>, registered with GoDaddy.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2010.
On August 3, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <googledns.net> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 August 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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.net by e-mail. Also on August 3, 2010, the 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 September 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an international provider of online tools, entertainment and search engine services that was created in 1997.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GOOGLE mark (including Reg. No. 2,884,502, issued September 14, 2004).
Complainant also owns trademark registrations for the GOOGLE mark with international trademark authorities.
Respondent registered the <googledns.net> domain name on October 28, 2005.
Respondent’s <googledns.net> domain name contains Complainant’s entire mark, merely adding the acronym “dns,” which stands for “Domain Name System,” a service that Complainant offers.
Respondent’s domain name does not resolve to an active website.
Respondent’s <googledns.net> domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent is not commonly known by the disputed domain name or Complainant’s GOOGLE mark.
Respondent is not affiliated with Complainant in any way, and Complainant has not authorized Respondent to use its mark.
Respondent does not have any rights to or legitimate interests in the <googledns.net> domain name.
Respondent registered and uses the <googledns.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence sufficient to establish rights in its GOOGLE mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that Complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding that a complainant’s registrations for its HONEYWELL mark throughout the world sufficient to establish its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <googledns.net> domain name contains Complainant’s entire mark, merely adding the acronym “dns” which means “Domain Name System,” referring to a service that Complainant offers. The addition of a descriptive acronym to a mark in forming a domain name, as well as the addition of the generic top-level domain (“gTLD”) “.net” does not distinguish the domain name from Complainant’s mark for purposes of the Policy. Respondent’s domain name is therefore confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter a disputed domain name to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <googledns.net> domain name. Once Complainant makes out a prima facie case in support of its allegations under this head of the Complaint, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made a sufficient prima facie case in its submissions on this issue. Owing to Respondent’s failure to respond to the Complaint, we may therefore presume that Respondent does not have rights to or legitimate interests in the <googledns.net> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Nonetheless, we will examine the evidence of record, by reference to the standards set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name or Complainant’s GOOGLE mark. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “Bryan Lewis”, which does not resemble the domain name. Further, Complainant asserts, without objection from Respondent, that Complainant has not authorized Respondent to use its mark in any way and that Respondent is not affiliated with Complainant. On this record, we must conclude that Respondent is not commonly known by the <googledns.net> domain name so as to have rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that 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 a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that Complainant alleges, without objection from Respondent, that Respondent has failed to make an active use of the <googledns.net> domain name. Such a failure is further evidence of Respondent’s lack of rights to and legitimate interests in the disputed domain name. Respondents non-active use of the contested domain name demonstrates that it is making a bona fide offering of goods or services via the contested domain under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that a respondent’s failure to use a disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and such a review is not 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 Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.
Respondent has failed to make an active use of the disputed domain name or to submit evidence showing its demonstrable preparations to make an active use of the domain name. Respondent’s failure to make an active use of the <googledns.net> domain name since registering it on October 28, 2005 is evidence that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <googledns.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 15, 2010
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