Google Inc. v. sms
Claim Number: FA1008001339538
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, of Fenwick & West LLP, California, USA. Respondent is sms (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-1.com>, registered with Fabulous.com Pty Ltd.
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 6, 2010.
On August 9, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <google-1.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@google-1.com by e-mail. Also on August 10, 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 13, 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 online provider of search engine services, news information, entertainment, and mapping services that has established service throughout the world.
Complainant owns registrations with the United States Patent and Trademark Office ("USPTO") for its GOOGLE trademark (including Reg. No. 2,884,502, issued September 14, 2004).
Respondent registered the <google-1.com> domain name on September 3, 2007.
Respondent’s domain name resolves to a website for escort services and other adult entertainment content.
Respondent’s <google-1.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent is not commonly known by the <google-1.com> domain name.
Complainant has not authorized Respondent to use its GOOGLE mark in any way.
Respondent does not have any rights to or legitimate interests in the <google-1.com> domain name.
Respondent registered and uses the <google-1.com> 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 established 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 a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world); see also 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).
See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that registration has occurred in some jurisdiction).
The <google-1.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the domain name contains the GOOGLE mark in its entirety while adding a hyphen and the number “1” as well as the generic top-level domain (“gTLD”) “.com.” 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 Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s domain name is confusingly similar to Complainant’s … mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.
Further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the 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 <google-1.com> domain name. Complainant is required to submit a prima facie case in support of this allegation. Once Complainant has established such a prima facie case, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests in the domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name.
From our review of Complainant’s submissions, we are satisfied that Complainant has established a prima facie case under this head of the Policy. Accordingly, the burden of proof has been transferred to Respondent. Owing to Respondent’s failure to respond to the allegations of the Complaint filed in this proceeding, we are entitled to presume that Complainant’s allegations are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.
Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it 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 contends, and Respondent does not deny, that Respondent is not commonly known by the disputed <google-1.com> domain name and that Complainant has not authorized Respondent to use its GOOGLE mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain only as “sms”, which does not resemble the contested domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <google-1.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also 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 relevant WHOIS information, as well as 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).
We also note that Complainant argues, without objection from Respondent, that Respondent is using the disputed domain name to resolve to a website featuring information on escort services and other adult entertainment content. Such use is evidence that Respondent has no rights to or legitimate interests in the disputed domain name because it is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Google Inc. v. disk prazer, FA 1245392 (Nat. Arb. Forum March 24, 2009) (using a domain name to resolve to a website offering escort services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Mattel, Inc. v. Kopsky c/o Mercedes, FA 934826 (Nat. Arb. Forum Apr. 17, 2007) (using a domain name for a website that contains adult –oriented material and information about escort services is not a bona fide offering of goods or services or a legitimate noncommercial of fair use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
In the circumstances here presented, we may comfortably presume that Respondent’s use of the <google-1.com> domain name to display information on escort services and other adult-oriented content is done for financial gain in the form of click-through or similar fees for each visit of Internet users to the websites of advertising businesses hosted on its website resolving from the contested domain name. This constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See supra Mattel, Inc. v. Kopsky c/o Mercedes; see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that a respondent’s tarnishing use of disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
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 <google-1.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 26, 2010
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