Google Inc. v. Java Den Web Solutions
Claim Number: FA1010001355351
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, California, USA. Respondent is Java Den Web Solutions (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlecloud.com>, registered with GoDaddy, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 28, 2010.
On October 29, 2010, GoDaddy, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlecloud.com> domain name is registered with GoDaddy, Inc. and that Respondent is the current registrant of the name. GoDaddy, Inc. has verified that Respondent is bound by the GoDaddy, 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 November 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@googlecloud.com. Also on November 1, 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.
A timely Response was received and determined to be complete on November 22, 2010.
On November 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On November 25, 2010 the Parties filed a Joint Request to Stay the Administrative Proceeding for forty-five days until January 9, 2011 pursuant to Supplemental Rule 6(b)(i). The Joint Request to Stay was approved by the Panel on November 29, 2010.
On January 7, 2011, the Complainant, acting within the period for which the Stay of Administrative Proceeding was granted under Supplemental Rule 6(b)(i), requested, pursuant to Supp. Rule 6(b)(ii), that the Stay of Administrative Proceeding be removed and the Complaint be reinstated pursuant to Supplemental Rule 6(b)(ii).
The Stay was removed on January 7, 2011 and the current action allowed to proceed to the Panel’s decision.
Complainant filed Additional Submissions which were received on January 7, 2011 in compliance with Supplemental Rule 7.
On January 12, 2011 Respondent filed Additional Submissions.
On January 31, 2011 the Panel issued a Procedural Order in accordance with paragraph 12 of the Rules requesting Respondent to provide a further statement or documents on or before Wednesday February 7, 2011.
Respondent failed to timely reply, but on February 16, 2011 emailed the Forum noting that he had misread the order and would like to provide the requested information.
On February 24, 2011 the Panel extended the time for Respondent to furnish a further statement or documents to March 3, 2011 and extended the corresponding time for Complainant to reply to Respondent’s submission to March 10, 2011.
Respondent filed timely a further statement or documents on March 2, 2011 and Complainant filed timely submissions on Respondent’s further statement or documents on March 10, 2011.
Complainant requests that the disputed domain name <googlecloud.com>, be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the GOOGLE trademark and service mark and relies on its portfolio of trademark registrations listed below and its rights at common law.
Complainant submits that since its creation in 1997 it has established and developed a significant and valuable world-wide reputation and goodwill using the GOOGLE trademark and service mark as the brand for its Internet search engine and other services and products on the Internet.
Complainant submits that it typically brands its products with the GOOGLE house mark in combination with a descriptive term and consequently in addition to its portfolio of registered trademarks, Complainant claims trademark use of the GOOGLE trademark in combination with numerous other words most of which are generic or descriptive. Complainant has submitted a long list of examples of such marks which it claims to put to trademark use including: GOOGLE ADSENSE, GOOGLE ALERTS, GOOGLE BLOG, GOOGLE CALENDAR, GOOGLE EARTH, GOOGLE LABS, GOOGLE READER, GOOGLE VOICE. Complainant argues that Internet users will associate the combination of its GOOGLE trademark and the word “cloud” to refer to Complainant’s business activities and cloud computing.
Complainant submits that the disputed domain name is nearly identical and certainly confusingly similar to its GOOGLE mark being the combination of Complainant’s distinctive trademark and the descriptive word “cloud”. Complainant submits that a domain name registrant may not avoid the likelihood of confusion by simply adding a descriptive or non-distinctive term to another’s mark. Citing: Google Inc. v. Zhang, FA 1245131 (Nat. Arb. Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the domain) (re <googlevideodownload.com> ); Google Inc. v. Babaian, FA 1060992 (Nat. Arb. Forum Oct. 1, 2007) (finding that where the Registrant merely added of “generic words [like] ‘web,’ ‘data,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar under Policy ¶ 4(a)(i)) (re <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com> and <mygooglestorage.com>).
Complainant argues that, as in the present Complaint, a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” Citing: 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”).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name and submits that other 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. Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (re <googlesex.com>). Registrant has not been authorized by Complainant to register or use the disputed domain name.
In the Complaint as filed, Complainant submitted that the disputed domain name resolves to an inactive website that contained only the terms “Index of” and a listing of inaccessible directory files. In support of this assertion Complainant furnished a print-out of the website to which the disputed domain name resolved on October 28, 2010. Complainant submits that such inactivity further supports Complainant’s position that Respondent has no rights or legitimate interests in the disputed domain name. Citing, e.g., Google Inc. v. Brown Donny c/o donnybrown, FA 1249402 (Nat. Arb. Forum Apr. 13, 2009) (“Respondent’s failure to make an active use of the disputed domain name indicates that there is no bona fide offering of goods or services…or legitimate noncommercial or fair use…”) (re <googleventure.com>); Nervous Tattoo, Inc. v. lin jia and linjia ltd, FA 1276302 (Nat. Arb. Forum Sept. 17, 2009) (finding Respondent’s failure to make active use of the domain name is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use where only content displayed at the domain name is “Index of” followed by a listing of inactive links).
Complainant submits that on information and belief, Respondent is not commonly known by the disputed domain name nor is the disputed domain name Respondent’s nickname. In this regard Complainant refers to the registration information on the WhoIs for the disputed domain name which states that the registrant’s name is Java Den Web Solution or Jaskirat Singh. See, Popular Enters., LLC v. Sung-a Jang, FA 811921 (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”).
Complainant states that it has not authorised Respondent to use its name or mark. Complainant submits that such unlicensed, unauthorized use of the disputed domain name that incorporates Complainant’s trademark is strong evidence that Respondent has no rights or legitimate interests in the domain name. Citing Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA 1076561 (Nat. Arb. Forum Oct. 26, 2007) as an example.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant argues that the fame and distinctive qualities of the GOOGLE trademark make it extremely unlikely that the disputed domain name was created independently. Citing The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA 112627 (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”). Complainant argues that even constructive knowledge of a famous mark like GOOGLE is sufficient: citing Google v. Abercrombie 1, FA 101579 (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).
Complainant submits that Respondent’s failure to use the disputed domain name, which is confusingly similar to its valuable trademark is evidence of bad faith registration and use. Citing Google Inc. v. Brown Donny c/o donnybrown, supra (finding bad faith where there was no evidence the Respondent ever intended to use the domain name, given “any use of the <googleventure.com> domain name, which is confusingly similar to the famous GOOGLE Mark, would be an attempt to profit from the likely confusion of internet users.”); Nervous Tattoo, Inc. v. lin jia and linjia ltd, supra.
Complainant submits that Complainant’s rights in the GOOGLE mark predate the registration of the disputed domain name on January 16, 2006, citing for example the decision of the Panel in Google Inc. v. Smith Smithers, FA 826563 (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> ).
Complainant has furnished evidence of email correspondence sent to Respondent on September 10, 2010 claiming rights in the GOOGLE mark and requesting transfer of the disputed domain name and a follow-up email on September 16, 2010. Respondent did not respond to these communications.
Finally Complainant argued that Respondent’s failure to respond to any demands from Complainant regarding the transfer of the disputed domain name and in particular to respond to a cease and desist letter indicates bad faith registration and use of the disputed 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 Fin., 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”).
B. Respondent
In the Response, Respondent states that he purchased the disputed domain name for USD $300 in September 2006 on an eBay auction. At that time the disputed domain name was offered and purchased as part of a package that included a website on which there was an application that allowed users to generate tag clouds or word clouds from GOOGLE searches. Respondent states that another domain name <googlecloud.net> was also included in the package. Respondent states that the website had been established in February 2006 before Respondent bought it together with the disputed domain name at auction. Respondent claims that he was interested primarily in purchasing the website because the program that created the tag clouds was “cool” and “fun” to use. Respondent states that while the other domain name <googlecloud.net> was offered as part of the package he did not accept the transfer of that domain name.
Respondent does not deny Claimants rights in the GOOGLE trademark but he denies that the disputed domain name is likely to confuse Internet users as alleged. He states that the disputed domain name represents a meaningful coinage which clearly describes the service provided on the website. He further points to the fact that the website to which the disputed domain name resolves contains the following text on every other page ever since it was launched in 2006: “This site is not affiliated with or sponsored by Google. Google is a trademark of Google. Inc.” Respondent further argues that the layouts and logo on his site have absolutely no similarity to Complainant’s official GOOGLE logos or layout.
Respondent has furnished a print-out of a third party web page from the year 2006 entitled “The Big Google Search Tools Collection”, which separates “Official Google Search Tools” and “Third Party Search Tools”. He points out that the third party web page put Respondent’s website into the latter category and he submits that this demonstrates that his use of the disputed domain name does not result in confusion with Complainant’s business among Internet users.
Respondent submits that he has rights and legitimate interests in the disputed domain name. He argues that the disputed domain name is very apt for the service that he provides. Respondent claims that the website to which the disputed domain name resolves has been up and running since early 2006 except for a couple of months during the period from August to October 2010 when it crashed. Since 2006 Respondent has been putting the disputed domain name, and the website to which it resolves, to a fair, non-commercial use, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark or service mark.
Respondent has furnished print-outs of blogs that he submits are evidence that various users have, since 2006, enjoyed his website and described it as being “fun”, “interesting” and “cool” in their reviews.
Respondent denies that he is a domainer. He states that he has never sold a domain name. He denies that the disputed domain name was registered or used in bad faith. He submits that he purchased the disputed domain name as part of a package on an eBay auction. He claims to have a right to put the disputed domain name to a legitimate non-commercial use to amuse visitors to the website to which it resolves, there is no confusion among Internet users. Respondent denies any attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of his website. Respondent further points to the fact that his contact information listed on the WhoIs is complete and accurate and he has never tried to hide anything. Respondent therefore submits that there is no element of bad faith in the registration or use of the disputed domain name.
C. Additional Submissions of Complainant
In Additional Submissions, Complainant denies that the disputed domain name is a “meaningful coinage” as asserted by Respondent and argues that the disputed domain name is indeed confusingly similar to the GOOGLE trademark. Complainant further argues that the disclaimer on Respondent’s website to which the disputed domain name resolves does not prevent confusion. Initial interest confusion cannot be eliminated by a disclaimer and users can still ignore or misconstrue the small notice at the bottom of the page. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). Complainant adds that the disclaimer does not cure Respondent’s improper use of the disputed domain name. Citing: Google Inc. v. Miller, FA 1067791 (holding “Respondent’s addition of a disclaimer does not support a finding that Respondent has rights or legitimate interests in the disputed domain name”).
Complainant re-asserts that Internet users will associate the combination of its GOOGLE trademark and the word “cloud” to refer to cloud computing and will not expect to find a third party website offering a cloud tag at that address.
Complainant re-asserts that Respondent has no rights or legitimate interest in the disputed domain name and submits that in this regard, it is irrelevant whether Respondent uses the disputed domain name as the address of a commercial or non-commercial website.
Complainant further submits that other panels have noted that third parties would be hard pressed to show legitimate interest in any Internet domain name incorporating Complainant’s GOOGLE mark, citing Google Inc. v. Frieje, FA 102609 (Nat. Arb. Forum, Jan. 11, 2002) (re <googlesex.com>).
Complainant refers to the results of a search of the Internet at <www.archive.org>, furnished as an annex to the Additional Submissions that reveal that the disputed domain name has previously been monetised with advertisements and therefore notwithstanding his statement to the contrary, Respondent has used the disputed domain name for commercial gain. Complainant submits that the advertisements contained links to competitors of Complainant.
Addressing the alleged bad faith registration and use of the disputed domain name, Complainant submits that this Panel may consider the totality of the circumstances in assessing whether the disputed domain name was registered and used in bad faith and the fame of Complainant’s trademark can be taken into account in assessing the motivation in the registration and use of the disputed domain name. It is well established that the Panel’s analysis need not be limited to the four enumerated factors in Policy ¶ 4(b), which are also listed in Registrant’s Response. See Google Inc. v. Whois Privacy LLC, FA 1278684 (Nat. Arb. Forum Sept. 23, 2009).
Complainant also argues that the length of time that Respondent has held the disputed domain name is not relevant as laches is not a defense under the Policy. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”). In any event there can be no laches in this case because Complainant contacted Registrant once it became aware of the domain name registration for the disputed domain name <googlecloud.com>.
D. Additional Submissions of Respondent
In Respondent’s Additional Submissions, Respondent argues Complainant’s Additional Submissions materially and completely changes the basis of the original Complaint as filed by acknowledging that Respondent has actively used the disputed domain name.
Respondent admits that he did put advertisements on his website in the past but argues that they were public service advertisements that were merely used to pay for the cost of hosting the website. He argues that the advertisements could not have misled or misdirected Internet users as the advertisements were clearly identified as such and were separate from other content on his website.
Furthermore Respondent argues that the advertisements were placed on his website with the knowledge and consent of Complainant as they were all posted by GOOGLE Adsense Network and Complainant obviously consented to the placing of these advertisements when it consented to provide the service and share the revenue.
Respondent re-iterated that the word “cloud” is understood in two ways in the context of the Internet viz. as relating to both cloud computing and tag clouds.
Respondent submits that the fact that he purchased the disputed domain name on an eBay auction together with a website tells much about the purpose for which the disputed domain name was registered and the purposes for which the disputed domain name and the associated website were subsequently used.
Respondent submits that Complainant has not specified the names of the competitors to which there are links on his website but concludes that Complainant is probably referring to small links at the bottom of the page of bookmarking websites which to the best of Respondent’s knowledge are in no way in competition with Complainant as Google is primarily a search company. Respondent is not aware of any book marking service being run by Google. Respondent states that he will be happy to remove the links if the Complainant identifies exactly which two of the six links are competitors of Complainant.
Panel Request for Further Statements or Documents pursuant to Paragraph 12 of the Rules
Complainant had submitted that the disputed domain name was inactive. In the Response Respondent provided archive evidence that the disputed domain name resolved to an active website which was accepted by Complainant in its Additional Submissions.
As the status, function and purpose of Respondent’s website is central to the issues in dispute, this Panel took an unusual step and visited Respondent’s website on January 29, 2011. On that date the disputed domain name resolved to a website at the following address <http://www.googlecloud.com/>
While this Panel found Respondent’s website to be active on that date, it appeared to the Panel that Respondent’s website did not generate any tag cloud as Respondent claimed and Internet users visiting Respondent’s website were merely directed, either directly or indirectly to Complainant’s website.
In the circumstances, this Panel issued a Procedural Order requesting Further Statements and documents from Respondent pursuant to paragraph 12 of the Rules and permitted Complainant to make submissions on same in compliance with the obligations imposed on the Panel by paragraph 10 sub-paragraph (b) of the Rules which requires that the Parties are treated with equality and that each Party must be given a fair opportunity to present its case.
Respondent furnished an explanation of the steps needed to utilize the “tag cloud” feature on Respondent’s website. Complainant accepted Respondent’s explanation but submitted that the described steps do not eliminate the likelihood for confusion.
Complainant is a Delaware corporation located in Mountain View, California engaged in the business of Internet browsers and the provision of other Internet based services and related goods. Complainant is the owner of the following registered trademarks:
U.S. Trademark Registration No. 2,884,502 registered on September 14, 2004 in respect of certain goods in international class 9.
U.S. Service Mark Registration No. 2,806,075, registered on January 10, 2004 in respect of certain services in international classes 38 and 42.
U.S. Trademark Registration No. 2,954,071 GOOGLE registered on May 24, 2005 in respect of certain goods and services in international classes 9, 11, 12, 16, 18, 21, 25, 28 and 35.
U.S. Trademark Registration N. 3,140,793 GOOGLE (Design) registered on September 12, 2006 in respect of certain goods and services in international classes 9, 11, 12, 16, 18, 21, 25, 28, 35, 38 and 42.
U.S. Trademark Registration No. 3,570,103, GOOGLE, registered February 3, 2009 in respect of certain services in international class 36.
Complainant has also furnished evidence of a substantial portfolio of registrations for the GOOGLE trademark in other jurisdictions throughout the world.
Respondent is an individual located in Ludhiana, India.
The disputed domain name was registered on January 16, 2006 and resolves to an active website that provides a facility whereby Internet users can generate a tag cloud from the results of searches on Complainant’s GOOGLE web browser.
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."
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.
Respondent accepts and acknowledges that Complainant has rights in the GOOGLE trademark but denies that the disputed domain name is confusingly similar to Complainant’s mark.
The disputed domain name consists of two elements viz. Complainants well known and distinctive trademark and the English language descriptive word “cloud”. The word has two meanings in the context of the Internet and websites namely it relates to cloud computing to process data and the use of tag clouds to display data.
This Panel finds that the word “google” is the dominant element in the disputed domain name. The combination of the descriptive element “cloud” to the distinctive word “google” does not in any way distinguish the domain name in any way. In fact given that the word “cloud” has specific meanings in the context of computing and the Internet and given that Complainant is engaged specifically in this field of activity, the combination of the word “cloud” with Complainant’s distinctive mark is likely in fact to add to the potential for confusion.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark GOOGLE in which Complainant has rights and Complainant has therefore discharged the onus of proof in the first element of the test as required by the Policy ¶ 4(a)(i).
Complainant has submitted that Respondent has no rights or legitimate interests in the disputed domain name inter alia because it alleges that the domain name is confusingly similar to Complainant’s trademark, Respondent is not known by the disputed domain name and he has not been authorized by Complainant to use the GOOGLE name.
In the circumstances, Complainant has made out a prima facie case and the onus of proof shifts to Respondent to prove that he has such rights or legitimate interest. Respondent has argued that he has rights or legitimate interests in the disputed domain name because since he acquired the domain name in an eBay auction in September 2006 he has continued to use it for fair, non-commercial purposes as the address of a website that allows Internet users to display the results of their GOOGLE searches in the form which Respondent calls a “tag cloud” or “word cloud”.
Respondent’s claim to have rights or legitimate interest in the disputed domain name is therefore based on the provisions of Policy ¶ 4(a)(iii) i.e. that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In casu, Respondent admits having used the disputed domain name to generate income from advertisements but argues that the use was de minimis, that he used the domain name for public service advertisements only, that the commercial use was for only a brief period, that it was with the knowledge and implied consent of Complainant as he was using GOOGLE Adsense Network to generate the income.
This Panel finds that in the particular circumstances of the present case the use of the disputed domain name to generate income from advertisements was de minimis and can be ignored for the purposes of this Complaint.
To establish rights or legitimate interest under Policy ¶ 4(c)(iii) as Respondent claims, it is not sufficient for Respondent to establish that he is putting the disputed domain name to a non-commercial or fair use. Such use must also be legitimate and without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
On the balance of probabilities, the fact that the disputed domain name is confusingly similar to Complainant’s GOOGLE trademark will mean that Respondent’s use will inevitably initially divert consumers away from Complainant’s websites, however it would appear that users of Respondent’s website are re-directed to Complainant’s website.
While Respondent’s website lacks sophistication and has an amateur quality about it, the idea of making tag clouds is not in itself objectionable in the sense that a link to an adult site might be as in Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA 1076561 (Nat. Arb. Forum Oct. 26, 2007), referred to above and relied upon by Respondent and so it does not automatically follow that Complainant’s trademark is being tarnished by Respondent.
Respondent’s use of the disputed domain name has much of the character of a non-commercial fan site.
The essential issue in this case is whether it is legitimate for a person without consent, to use a domain name that is intentionally confusingly similar to Complainant’s trademark as the address of a website, for non-commercial purposes, to provide an add-on to Complainant’s commercial browser?
There has been a number of cases in which the respondent successfully argued an entitlement to rights or legitimate interest on the basis of Policy ¶ 4(c)(iii). In Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 26, 2000) for example the complainant owned the MISSION SUCCESS trademark but complaint was denied when the panel was satisfied that the domain name <missionsuccess.net> was being used by the respondent for non-commercial religious purposes. That case may be distinguished from the present case as the domain name at issue was a combination of two words when taken together had a specific meaning in a religious context and while the domain name was identical to the complainant’s MISSION SUCCESS trademark the panel was satisfied that the respondent was unaware of the complainant’s rights when she registered the domain name and it was plausible that she might register and use the domain name without reference to the complainant or its business. In casu, the association of the disputed domain name with Complainant’s trademark is intentional and Complainant’s trademark is a coined word.
In a recent decision under the Policy, Bulmers Ltd. and Wm. Magner Ltd. v. (FAST-12785240) magnersessions.com 1,500 GB Space and 15,000 Monthly Bandwidth, Bluehost.Corn INC/Jason LaValla, D2010-1885 (WIPO Jan. 17, 2011) the respondent successfully argued that he that he registered the disputed domain name to allow the downloading of his band’s (Magners’) music and was putting the domain name to a non-commercial use. The panel found that on balance that there was sufficient evidence to plausibly support the Respondent’s case and it followed that, in the panel’s view, the complainant had not met its burden of showing that the respondent had no rights or legitimate interests in the disputed domain name.
In that case there was no evidence that the respondent’s website was intended for commercial gain. Neither was there any evidence that the respondent sought to misleadingly divert Internet users looking for the complainant.
The panel noted that
Addressing the more difficult issue of what constitutes legitimate non-commercial or fair use, the panel noted that
“under paragraph 4(c)(iii) of the Policy, a respondent may demonstrate a right or legitimate interest where there is evidence of a legitimate noncommercial or fair use of a domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Particularly, it appears to the Panel that the disputed domain name may have been used for a legitimate noncommercial use of this kind. WIPO’s Index of WIPO UDRP Panel Decisions cites decisions relating to questions around three types of legitimate non-commercial or fair use: being ‘criticism & commentary’, ‘parody sites’, and ‘fan sites’. While the Respondent’s use in this case is not one of those kinds, the three categories referenced in the WIPO Index are merely examples (albeit common examples) of questions that have arisen in relation to claims of legitimate noncommercial or fair uses. The terms of paragraph 4(c)(iii) are broadly framed. As such, what is a legitimate noncommercial use must be determined by the circumstances of each case.”
The panel commented that the facts in each case must be taken on its own merits:
“lack of evidence that the Respondent’s website was intended for commercial gain, to misleadingly divert Internet users, or to tarnish the Complainant’s mark, is not however sufficient for a finding under paragraph 4(c)(iii). There remains the more general question of whether the Respondent is otherwise making a legitimate use. What is legitimate depends on the facts of each case”
Policy ¶ 4(c)(iii) is not only broadly framed as noted above, it leaves open the question of whether “non commercial or fair use” is a single or bifurcated concept. On the face of it, in this case the use to which the disputed domain name is “non-commercial” but it cannot be regarded as a “fair” use as it has links to third party commercial websites namely: del.icio.us, Newsvine, Blinklist, Furl, Reddit, Yahoo! MyWeb which respectively resolve to pages at the following domain names: <delicious.com/>, <newsvine.com>, <blinklist.com/>, <diigo.com>, <reddit.com>, <yahoo.com>. Respondent has stated that these websites provide bookmarking services and has questioned whether these websites compete with Complainant’s browser services. YAHOO in particular is clearly a competitor of Complainant.
In considering the problem posed in this case, this Panel has considered whether for example a stranger should be permitted to use a trademark that is intentionally confusingly similar to the distinctive trademark of a bank to provide an interest rate calculator?
This Panel finds that Respondent has no rights or legitimate interest in the disputed domain name. While Respondent may have no intent for commercial gain, by posting links to third party commercial sites, at least one of which is directly competing with Complainant, Respondent cannot claim to be putting the disputed domain name to a non-commercial use. Furthermore such activity cannot be classified as legitimate.
In reaching this difficult decision, this Panel is influenced by the fact that while accepting Respondent’s submission that he is not receiving any direct commercial gain from the disputed domain name and while his reasons for maintaining the website may well be hobbyist and altruistic, Respondent is an individual but he holds the disputed domain name registration under the title “Java Den Web Solutions” and appears to be engaged in the business of providing services related to the Internet.
The Complainant has therefore established the second element of the test in Policy ¶ 4(a).
Complainant has alleged that the disputed domain name was registered and is being used in bad faith. Respondent has argued that there is no evidence to support such a finding.
Respondent’s case is that he was not the original registrant of the disputed domain name. Respondent claims to have purchased the disputed domain name for USD $300 together with a web site that allowed users to generate tag clouds and was intended for non-commercial purposes and that another domain name was included in the package on offer in the auction.
This Panel finds therefore that on the balance of probabilities the disputed domain name was originally registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant or a third party for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. Taking Respondent’s explanation as to how he came to acquire the disputed domain name on its face, the disputed domain name was offered in an Internet auction when he acquired it and this indicates that on the balance of probabilities the original registrant registered the disputed domain name in order to sell it on. The fact that the similar domain name <googlecloud.net> was offered as part of the package adds to the likelihood that this was the intention of the original registrant.
As to the use to which the disputed domain name was in fact subsequently put, Complainant initially alleged that the disputed domain name had not been put to any active use. Respondent however furnished evidence that the disputed domain name had resolved to an active website since 2006 but that the website was down for a brief period from August to October 2010 when Complainants screen-shot was taken. When faced with this contrary evidence adduced by Respondent, without giving any explanation as to why the Complaint as filed contained incorrect allegations, Complainant changed tack and instead of relying on alleged passive use, accepted that Respondent had put the disputed domain name to active use but argued that Respondent had used the disputed domain name to generate income from advertisements.
A respondent’s commercial use of the domain name to generate pay per click revenue would in most circumstances amount to bad faith use, however in the present case not only was the use de minimis, but Complainant facilitated Respondent and apparently gained revenue itself from the advertisements placed on Respondent’s website and therefore it cannot successfully argue that the disputed domain name is being used in bad faith on that basis.
However, Respondent’s intentional use of the disputed domain name that is intentionally confusingly similar to Complainant’s GOOGLE trademark to attract Internet users to a website that contains links to competitors is use in bad faith.
In the circumstances Complainant has established the third and final element of the test in Policy ¶ 4(a) Policy and is entitled to succeed in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
James Bridgeman, Panelist
Dated: March 20, 2011
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