Google Inc. v. Ruslan Moussaev
Claim Number: FA1008001344102
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, California, USA. Respondent is Ruslan Moussaev (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleapp.com>, registered with GoDaddy.com, Inc.
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 August 31, 2010.
On September 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googleapp.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@googleapp.com by e-mail. Also on September 2, 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 October 7, 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" 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:
1. Respondent’s <googleapp.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleapp.com> domain name.
3. Respondent registered and used the <googleapp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., operates an Internet search engine service. Complainant also offers “Google Apps,” which is a group of software applications used by over 2 million businesses. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered January 20, 2004).
Respondent, Ruslan Moussaev, registered the <googleapp.com> domain name on May 15, 2008. The disputed domain name resolves to a parked website.
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 asserts rights in the GOOGLE mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 2,806,075 registered January 20, 2004). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant argues that Respondent’s <googleapp.com> domain name is confusingly similar to its GOOGLE mark. Respondent replicates Complainant’s mark in the disputed domain name. Respondent then adds the term “app,” which is a common abbreviation for the term “application” and is a term that describes Complainant’s “Google Apps” software applications. Respondent also attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not negate a finding of confusingly similar. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <googleapp.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <googleapp.com> domain name under Policy ¶ 4(a)(ii). 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 and legitimate interests. 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 Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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 evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states it has not authorized Respondent to use its GOOGLE mark in a domain name. Moreover, the WHOIS information lists “Ruslan Moussaev” as the registrant of the disputed domain name, which the Panel finds is not similar to the <googleapp.com> domain name. Based on the evidence in the record, the Panel finds that Complainant’s assertions combined with the WHOIS registrant information suggest that Respondent is not commonly known by the <googleapp.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
Complainant contends Respondent’s <googleapp.com> domain name resolves to a parked website. A screen shot of the website resolving from this disputed domain name confirms this contention. Thus, based on the evidence in the record, the Panel finds Respondent has failed to make active use of the disputed domain name. Accordingly, the Panel finds Respondent does not use the <googleapp.com> domain name to make 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 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 Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); 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).
Prior panels have found that passive holding can qualify as bad faith in certain situations. These findings typically occur: (1) when the respondent failed to make active use of a domain name and the complainant’s rights in a mark predate the respondent’s registration; or (2) when the respondent registered a domain name that was identical or confusingly similar to a famous trademark and the surrounding circumstances justified a finding of bad faith.
First, panels have found failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). In this case, Respondent registered the <googleapp.com> domain name on May 15, 2008, over four years after Complainant registered the GOOGLE mark with the USPTO (e.g., Reg. No. 2,806,075 registered January 20, 2004). The Panel finds Respondent registered the confusingly similar domain name after Complainant acquired rights in the GOOGLE mark. Therefore, the Panel finds the <googleapp.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Second, prior panels have also found passive holding qualifies as bad faith use when the respondent registered a domain name that was identical or confusingly similar to a very famous or distinctive trademark and the overall circumstances justified such a finding. For example, in Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006), the panelist found that the respondent should have known of the DISNEY mark because it is domestically and internationally famous. The panelist concluded that the respondent’s failure to use the <disneyparks.com> domain name several years after its creation date supported a finding of use in bad faith. Additionally, in eBay Inc. v. xu kefei (kefei xu), D2008-0481 (WIPO July 7, 2008), the panelists found the respondent’s inactive use constituted bad faith use. Here, the panelists relied on Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). In Telestra, panelist Andrew F. Christie held that passive holding can, in some circumstances, support a finding of use in bad faith. Id. In particular, Mr. Christie relied on five factors:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. Id.
Based on Telestra, the panelists in eBay found the surrounding circumstances justified a finding of bad faith use. Specifically, the panelists concluded the respondent should have known about the complainant’s EBAY mark given that the mark “is famous around the world.” Furthermore, the panel noted the distinctiveness of the mark, stating “the expression “eBay” is an invented word, and as such, it is not the kind of expression the Respondent might have thought of if it did not already know of the Complainant.” Finally, the respondent in eBay registered the disputed domain name significantly after the complainant had acquired rights in the mark. In this case, Complainant’s GOOGLE mark is used in connection with one of the largest and widely used Internet search engines in the world. Thus, the GOOGLE mark is famous around the world. In addition, “Google,” like “eBay,” is an invented word. And, as previously discussed, Respondent registered the <googleapp.com> domain name after Complainant acquired rights in the GOOGLE mark. Lastly, Respondent has failed to make use of the <googleapp.com> domain name over two years after it registered the domain name. Therefore, the Panel finds, given the particular circumstances surrounding this case, Respondent’s passive holding of the <googleapp.com> domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleapp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 7, 2010
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