Google Inc. v. Vasea Petrovich
Claim Number: FA1008001339345
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, of Fenwick & West LLP, California, USA. Respondent is Vasea Petrovich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2010.
On August 6, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@gogle-analitics.info, postmaster@google-abalytics.info, postmaster@google-acalytics.info, postmaster@google-ahalytics.com, postmaster@google-alalytics.info, postmaster@google-anaiytics.info, postmaster@google-analittics.info, postmaster@google-analitylcs.info, postmaster@google-analltics.info, postmaster@google-anallytics.info, postmaster@google-analyfics.info, postmaster@google-analytisc.info, postmaster@google-analytlcs.info, postmaster@google-apalytics.info, postmaster@google-aqalytics.info, postmaster@google-avalitics.info, postmaster@google-azalitics.info, postmaster@google-nalytics.info, postmaster@google-server01.com, postmaster@google-server02.com, postmaster@google-server03.info, postmaster@google-server10.info, postmaster@google-server11.info, postmaster@google-server12.info, postmaster@google-server14.info, postmaster@google-server15.info, postmaster@google-server16.info, postmaster@google-server29.info, postmaster@google-server3.info, postmaster@google-server31.info, postmaster@google-server41.info, and postmaster@google-servero1.com by e-mail. Also on August 11, 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 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names.
3. Respondent registered and used the <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., holds multiple trademark registrations for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 issued January 20, 2004) in connection with its Internet search services. Complainant operates an official website resolving from its <google.com> domain name.
Respondent, Vasea Petrovich, registered the disputed domain names not earlier than January 20, 2010. The disputed domain names fail to resolve to active websites but the <google-ahalytics.com>, <google-server03.info>, and <google-server04.info> disputed domain names attempt to download malicious computer software onto Internet users’ computers. Additionally, the <google-apalytics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names display warnings that the resolving webpages are “attack pages.”
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.
The Panel finds that Complainant has rights in its GOOGLE mark through its trademark registrations pursuant to Policy ¶ 4(a)(i). 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 Policy ¶ 4(a)(i).”). The Panel also determines that the fact that Complainant has not registered its GOOGLE mark in the country where Respondent resides or operates is irrelevant to Complainant’s rights in the mark. See 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).
Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent’s <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, and <google-nalytics.info> domain names all include Complainant’s GOOGLE mark, an added hyphen, a misspelled version of the generic term “analytics,” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that such alterations do not overcome a finding of confusing similarity. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also 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). Respondent’s <gogle-analitics.info> contains a misspelled version of Complainant’s GOOGLE mark, as well as the hyphen, misspelled version of “analytics,” and the gTLD “.info.” The Panel finds that this disputed domain name is confusingly similar to Complainant’s GOOGLE mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Sports Auth. Mich. Inc., supra.; see also Warner Bros. Entm’t Inc., supra.; see also Trip Network Inc., supra.
Respondent’s <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names contain Complainant’s entire GOOGLE mark, an added hyphen, the generic term “server” coupled with unrelated numbers, and the gTLD “.info.” The Panel finds that these alterations do not alleviate the confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel determines that according to Policy ¶ 4(a)(i), Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The Panel finds that, based on the arguments
in the Complaint, Complainant has established a prima facie case in support of its allegations and Respondent has
failed to submit a Response to these proceedings. See
Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007)
(“Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii), and then the burden shifts to Respondent to show it does have rights
or legitimate interests.”); see also F.
Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
Complainant asserts that Respondent is not commonly known by
the disputed domain names or any name containing Complainant’s GOOGLE
mark. The WHOIS information for the disputed
domain names indicates that the registrant is “Vasea Petrovich,” which
Complainant argues has no connection to the disputed domain names or
Complainant’s mark. With no evidence in
the record to the contrary, the Panel finds that Respondent is not commonly
known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain name
under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in
the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain names fail to resolve to active websites but that Complainant has received reports indicating that Internet users who access the websites resolving from Respondent’s <google-apalytics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> disputed domain names received warnings that the resolving webpages are “attack pages” and that the <google-ahalytics.com>, <google-server03.info>, and <google-server04.info> disputed domain names caused malicious software to be downloaded to Internet users’ computers. The Panel finds that Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website,…[which] may annoy or harm the users in some way,…is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <google-ahalytics.com>, <google-server03.info>, and <google-server04.info> disputed domain names distribute malware to the computers of Internet users, evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Mary Kay, Inc. v. Rahul.redregister c/o private customer, FA 1256033 (Nat. Arb. Forum May 28, 2009) (“[t]he Panel assumes that Respondent receives fees for engaging in this behavior or that Respondent uses information gained from the malware software to obtain some form of revenue. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use).
Respondent’s remaining disputed domain names fail to resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also 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).
The Panel finds that 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 <gogle-analitics.info>, <google-abalytics.info>, <google-acalytics.info>, <google-ahalytics.com>, <google-alalytics.info>, <google-anaiytics.info>, <google-analittics.info>, <google-analitylcs.info>, <google-analltics.info>, <google-anallytics.info>, <google-analyfics.info>, <google-analytisc.info>, <google-analytlcs.info>, <google-apalytics.info>, <google-aqalytics.info>, <google-avalitics.info>, <google-azalitics.info>, <google-nalytics.info>, <google-server01.com>, <google-server02.com>, <google-server03.info>, <google-server10.info>, <google-server11.info>, <google-server12.info>, <google-server14.info>, <google-server15.info>, <google-server16.info>, <google-server29.info>, <google-server3.info>, <google-server31.info>, <google-server41.info>, and <google-servero1.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 23, 2010
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