national arbitration forum

 

DECISION

 

Google Inc. v. dr3 films a/k/a Steven Harberts

Claim Number: FA1010001354689

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, California, USA.  Respondent is dr3 films a/k/a Steven Harberts (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleinstant.com>, registered with FastDomain, Inc.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2010; the National Arbitration Forum received payment on October 26, 2010.

 

On October 27, 2010, FastDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <googleinstant.com> domain name is registered with FastDomain, Inc. and that Respondent is the current registrant of the name.  FastDomain, Inc. has verified that Respondent is bound by the FastDomain, Inc. 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 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@googleinstant.com.  Also on October 28, 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 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Google is a Delaware corporation located in Mountain View, California.

 

2.      The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin.  Since that time, Google has become one of the largest, most highly recognized, and widely used Internet search services in the world.  Google’s primary website is located at www.google.com.

 

3.      Currently, the GOOGLE search engine maintains one of the largest collections of searchable documents in the world.  The GOOGLE search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content in many different languages.

 

4.      Google’s website is one of the most popular destinations on the Internet.  For example, comScore and Bloomberg.com have ranked Google as the most visited group of websites in the world.  Further, Nielsen’s NetRatings has ranked Google’s search engine as the number one search engine for each of the months of June, July and August, 2010, in each case with over 50 percent of searches.

 

5.      Google has consistently been honored for its technology and its services, and has received numerous industry awards, dating from 1998. 

 

6.Google also offers co-branded web search solutions and has hundreds of thousands of publishers in its content network.

 

7. In addition to being accessible from desktop PCs, Google’s adaptable, highly scalable search technology can also be accessed from most mobile and wireless platforms.

 

8.      Google also offers a wide range of other products and services besides search.  A full list of available products and services can be found at http://www.google.com/intl/en/options/.  In particular, Google uses GOOGLE INSTANT as the name of a feature that enhances its search engine by displaying results as users type queries into the search box.

 

9.The GOOGLE Mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services.  The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google.  As a result, the GOOGLE Mark and name symbolize the tremendous goodwill associated with Google and are property rights of incalculable value.  Due to widespread and substantial international use, this mark and name have become famous.

 

10.  Google owns numerous United States and foreign registrations for the GOOGLE Mark (the “Registrations”).  Each Registration remains valid and in full force. 

Registrant, Its Activities and Its Registration of the Domain Name

11.  Registrant is an entity or individual located in Brooklyn, New York, United States.

12.  Registrant registered the Domain Name on January 25, 2009.

13.  The Domain Name currently resolves to a parked page through which Registrant presumably receives income from its diversionary use of the Domain Name.

Efforts to Resolve This Matter

14.  Google has exchanged the following communications with Registrant in an effort to have the Domain Name transferred from Registrant to Google:

·        On September 16, 2010, Complainant sent an email to Registrant explaining Google’s rights and requesting transfer of the Domain Name.

·        On October 8, 2010, Complainant sent a follow up email requesting a response.

·        Registrant did not respond.

 

V.           Legal Grounds

15.  This Complaint is based on the following legal grounds.

Likelihood of Confusion—ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

16.  Google has used the GOOGLE Mark continuously since well prior to January 25, 2009, the registration date for the Domain Name.  Google owns U.S. registrations contained in Ex. 8 issued prior to, or resulting from applications filed prior to, January 25, 2009.  Each remains valid and in full force.  Thus, Complainant has rights in the GOOGLE Mark that predate the registration date of the Domain Name.  See, e.g., Google Inc. v. Smith Smithers, FA0610000826563 (Nat. Arb. Forum Dec. 7, 2006) (“Although [r]espondent’s registration of the [disputed domain names] predate [sic] Complainant’s USPTO registration, Complainant’s filing date of September 16, 1998 predates [r]espondent’s registration [which] sufficiently establishes rights in the GOOGLE Mark”) (re googlevideo.com, googlevideos.com, googlemovie.com, googlemovies.com, googleforums.com and googlewebmaster.com domain names).

17.  A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.”  PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).  Here, the Domain Name incorporates the famous GOOGLE Mark in its entirety, and is confusingly similar to it.

18.  Additionally, Google uses GOOGLE INSTANT in connection with a feature of its search engine services.  As a result, users seeing the googleinstant.com domain name are even more likely to believe erroneously that it originates with or is associated with Google.

19.  As such, the Domain Name is nearly identical, and certainly confusingly similar, to the GOOGLE Mark.

No Rights or Legitimate Interests—ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

20.  As Panels have noted, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.”  Google Inc. v. Mikel M Frieje, FA011000102609 (Nat. Arb. Forum Jan. 11, 2002) (re googlesex.com domain name).  Registrant has not been authorized by Complainant to register or use the Domain Name.

21.  The Domain Name is currently parked.  A parked domain is a domain that has no website or active content; instead it resolves to a domain registration page that has been monetized with click-through ads.  Such use further supports Complainant’s position that the Registrant has no legitimate rights or interests in the Domain Name.  See American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009) (holding no rights or legitmate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); see also, Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Nat. Arb. Forum Jul. 17, 2007) (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites).

22.  On information and belief, Registrant is not commonly known by the name or nickname of the Domain Name, or any name containing Complainant’s GOOGLE Mark.  Registrant’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the Mark as Registrant’s name or nickname.  See, Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Nat. Arb. Forum Nov. 16, 2006) (“[r]espondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).  Registrant’s name is dr3 films or Steven Harberts.

23.  Complainant has not authorized or licensed Registrant to use any of its trademarks in any way.   Unlicensed, unauthorized use of domains incorporating complainant’s trademark is strong evidence that Registrant has no rights or legitimate interests.  See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).

24.  Thus, Registrant has no rights or legitimate interests in the Domain Name.

Bad Faith—ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).

25.  The evidence overwhelmingly supports the conclusion that Registrant registered and is using the Domain Name in bad faith.  First, the fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the Registrant created the Domain Name independently.  See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat. Arb. Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).  Even constructive knowledge of a famous mark like GOOGLE is sufficient.  Google v. Abercrombie 1, FA0111000101579 ( Nat. Arb. Forum Dec. 10, 2001) (“because of the famous and distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name]”) (re googld.com domain name). 

26.  Second, Respondent’s current use of the Domain Name to resolve to a parked page containing click-through ads constitutes bad faith use and registration.  See, e.g., Google Inc. v. Forum LLC, supra, FA0708001053323 (finding bad faith registration and use where <googlenews.com> “resolves to a commercial search engine website” generating “click-through advertising fees”); REO Speedwagon, Inc. v. Domain Administrator, FA0702000910799 (Nat. Arb. Forum Mar. 23, 2007) (bad faith use and registration found; domain name used to attract Internet users to generate “per click” revenue); State Farm Mut. Auto. Ins. Co. v. Haan, FA0703000948470 (Nat’l Arb. Forum May 9, 2007) (“The Panel finds that appropriating another’s mark to provide links to competitors is evidence of bad faith registration and use” where the domain name resolved to a “parked” page provided by the registrar for the domain name).  Such use demonstrates Registrant’s intent to attract, for commercial gain, Internet users to Registrant’s web site by creating a likelihood of confusion with Complainant’s GOOGLE Mark.  See ICANN Policy ¶4(b)(iv).

27.  Finally, Registrant has failed to comply with demands from Google regarding transfer of the Domain Name.  Such failure to respond to a cease-and-desist letter indicates bad faith registration and use of a domain name.  See, e.g., Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use.”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”). 

28.  As shown above, Registrant has registered and is using the Domain Name in bad faith.

 

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google Inc., has used its GOOGLE mark since 1997 and is one of the most widely used Internet search engines in the world.  Complainant also offers other features such as Google Instant, which enhances Internet searches by displaying search results as queries are entered.  Complainant holds numerous trademark registrations for its GOOGLE mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 issued September 14, 2004). 

 

Respondent registered the <googleinstant.com> disputed domain name on January 25, 2009.  The disputed domain name resolves to a website with third-party links and advertisements to various websites unrelated to Complainant. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends it has established rights in its GOOGLE mark.  Previous panels have found established rights where a complainant has registered the mark with a federal trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).  Complainant holds numerous trademark registrations for its GOOGLE mark with the USPTO (e.g. Reg. No. 2,884,502 issued September 14, 2004).  Therefore, the Panel concludes Complainant has established rights in its GOOGLE mark pursuant to Policy ¶4(a)(i).

 

Complainant argues Respondent’s <googleinstant.com> domain name is confusingly similar to Complainant’s GOOGLE mark.  The disputed domain name differs from Complainant’s mark only by the addition of the descriptive word “instant,” which describes Complainant’s new search feature, and the addition of a generic top-level domain (“gTLD”) “.com.”  The Panel finds the addition of a descriptive word fails to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The Panel also finds the addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark.  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 concludes that Respondent’s <googleinstant.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶4(a)(i). 

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts Respondent has no rights or legitimate interests in the <googleinstant.com> domain name.  Previous panels have found if complainant establishes a prima facie showing in support of its allegations, the burden then shifts to respondent to prove it has rights or legitimate interests under Policy ¶4(a)(ii).  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 a prima facie showing.  Given Respondent’s failure to respond to the Complaint, the Panel may assume Respondent lacks rights or legitimate interests.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶4(c).

 

Complainant contends Respondent is not commonly known by the <googleinstant.com> domain name.  The WHOIS information identifies Respondent as “dr3 films / Steven Harberts,” which is not similar to the disputed domain name.  Complainant has not authorized or licensed Respondent to use or register the disputed domain name and Complainant asserts no additional evidence is presented to provide a basis for finding Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds Respondent is not commonly known by the <googleinstant.com> domain name under Policy ¶4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Respondent uses the <googleinstant.com> domain name to operate a website with no active content other than a directory of click-through links and advertisements.  Respondent likely receives click-through fees from these links.  The Panel finds Respondent’s use of the disputed domain name to host a website displaying third-party links and advertisements 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

The Panel infers Respondent receives click-through fees from the directory links.  Respondent uses the confusingly similar <googleinstant.com> domain name to redirect Internet users to a website featuring advertisements and links to various websites unrelated to Complainant.  Internet users searching for Complainant’s online services may instead find Respondent’s website and become confused as to Complainant’s association with, or sponsorship of, the disputed domain name, website, and featured links.  Respondent attempts to profit from this confusion through the receipt of click-through fees.  The Panel finds Respondent’s use of the confusingly similar disputed domain name constitutes bad faith use and registration under Policy ¶4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)).

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googleinstant.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: December 3, 2010

 

 

 

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