Google Inc. v. Haydar Bas
Claim Number: FA1009001349314
Complainant is Google Inc. ("Complainant"), represented by Meredith M. Pavia, California, USA. Respondent is Haydar Bas ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google43.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Public Domain Registry.
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 September 29, 2010; the National Arbitration Forum received payment on September 29, 2010.
On October 3, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Public Domain Registry confirmed by e-mail to the National Arbitration Forum that the <google43.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Public Domain Registry and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Public Domain Registry has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Public Domain Registry registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@google43.com. Also on October 6, 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 November 3, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 owns the exclusive rights to its GOOGLE mark, which it uses largely in connection with its Internet search engine and database business.
Complainant holds registrations with the United State Patent and Trademark Office (“UPSTO”) for its GOOGLE service mark (including Reg. No. 2,806,075, issued January 20, 2004).
Respondent registered the <google43.com> domain name on May 18, 2009.
The disputed domain name redirects internet users to the website <aramayeri.tk> that displays a search engine box, several other of Complainant’s marks and links to several of Complainant’s business competitors.
Respondent’s <google43.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent is not authorized to use the GOOGLE mark.
Respondent does not have any rights to or legitimate interests in the <google43.com> domain name.
Respondent registered and uses the <google43.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 service mark 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 the GOOGLE service mark pursuant to Policy ¶ 4(a)(i) by virtue of its registrations of the mark with a national trademark authority, irrespective of the country of origin of Respondent. 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).
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 a respondent operates, it being sufficient that a complainant can demonstrate a rights in a mark in some jurisdiction).
Respondent’s <google43.com> domain name is confusingly similar to Complainant’s GOOGLE mark. The disputed domain name contains the entire mark, and merely adds the number “43” and the generic top-level domain (“gTLD”) “.com.” The addition to a mark of non-distinctive numbers and a gTLD do nothing to distinguish a disputed domain name from the mark. See 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 …[a]… nondistinctive number…. The addition of the number … is insufficient to distinguish the domain name from Complainant’s mark.
See also 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.
Therefore, the Panel concludes that Respondent’s <google43.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to or legitimate interests in the <google43.com> domain name. Once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it does have rights to or legitimate interests in the contested domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may properly infer that Respondent does not have rights to or legitimate interests in the <google43.com> domain name. 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.
Nevertheless, we will examine the record before us, 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 contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the GOOGLE mark. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Haydar Bas,” which does not resemble the contested domain name. In light of this, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name pursuant to 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 relevant 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s allegation that Respondent uses the <google43.com> domain name to redirect Internet users to a separate website <aramayeri.tk>, which displays a search bar, as well as links to various websites of Complainant and the sites of Complainant’s business competitors. In the circumstances here presented, we may comfortably presume that Respondent profits from the visits of Internet users to the latter websites from the receipt of click-through fees. This use of the contested domain name does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether the respondent is itself profiting commercially from click-through fees).
The Panel therefore finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent attempts to disrupt Complainant’s business by featuring competing third-party links and services at the website resolving from the disputed domain name. This disruption is evidence that Respondent has registered and uses the contested domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to the websites of a complainant’s commercial competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that, where a respondent’s website featured hyperlinks to websites competing with the business of a complainant and included a link to a complainant’s website, that respondent’s use of the <redeemaamiles.com> domain name constituted disruption of that complainant’s business under Policy ¶ 4(b)(iii)).
Respondent uses the <google43.com> domain name to direct Internet users to a website that promotes Complainant’s commercial competitors. Respondent likely benefits from its use of a domain name which is confusingly similar to Complainant’s mark by thus attracting Internet users, who will tend to be confused as to the possibility of Complainant’s affiliation with or sponsorship of that website. The registration and use of the contested domain name in this manner is in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by that complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is 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 <google43.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 18, 2010
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