Google Inc. v. The Strunk Group
Claim Number: FA1011001360166
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia of Fenwick & West LLP, California, USA. Respondent is The Strunk Group (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mygooglelocal.com>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2010; the National Arbitration Forum received payment on November 23, 2010.
On November 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mygooglelocal.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@mygooglelocal.com. Also on November 24, 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 December 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mygooglelocal.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <mygooglelocal.com> domain name.
3. Respondent registered and used the <mygooglelocal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is a large web company focused in the area of providing search services for the World Wide Web. Complainant has been doing business in the field since 1997. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,954,074 issue May 24, 2005) and many other countries around the world for its GOOGLE mark. The GOOGLE mark is used in support of Complainant’s wide ranging web-based services.
Respondent, The Strunk Group, registered the disputed domain name on May 22, 2009. The disputed domain name resolves to a website offering services that compete with Complainant. Respondent sells search engine marketing services from the site.
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 contends that it has established rights in the mark via registration with a federal trademark authority. Previous panels have found that trademark registration with a federal trademark authority provides affirmative evidence of established rights in the mark. 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has established rights in its GOOGLE mark under Policy ¶ 4(a)(i), based on Complainant’s trademark registrations with the USPTO (e.g., Reg. No. 2,954,074 issue May 24, 2005).
Complainant also contends that Respondent’s <mygooglelocal.com> domain name is confusingly similar to its own GOOGLE mark. The disputed domain name incorporates the entirety of Complainant’s mark while including the generic terms, “my” and “local,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to differentiate the disputed domain name from Complainant’s GOOGLE mark by merely adding two general terms and a gTLD to GOOGLE. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); 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.”). Thus, the Panel concludes that Respondent’s <mygooglelocal.com> domain name is confusingly similar to Complainant’s GOOGLE mark according to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that the Complainant has met its burden of proof by making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it have rights or legitimate interests in the disputed mark after Complainant has met its prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). When a respondent fails to provide a response to the initial complaint, the Panel may assume that it does not have legitimate interests or rights in the disputed domain name <mygooglelocal.com>. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). However, without a response the Panel will still examine the record in its entirety to determine whether Respondent has rights or legitimate interests in the disputed domain name according to the factors contained in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the domain name <mygooglelocal.com>. Respondent has brought forth no evidence to show that it is commonly known by the disputed domain name. The WHOIS information indentifies registrant as “The Strunk Group,” which Complainant contends is not similar to the <mygooglelocal.com> domain name. Thus the Panel finds that Respondent is not commonly known by the disputed domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in any bona fide offering of goods and services or making a legitimate noncommercial or fair use of the <mygooglelocal.com> domain name. Respondent’s disputed domain name resolves to a website offering search engine marketing services for companies in competition with Complainant’s own business. Based on evidence in the record, Respondent apparently receives a commission from the users of its services. The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s <mygooglelocal.com> resolves to a site offering search engine marketing services which are the exact same as services provided by Complainant. Complainant contends that the disputed domain name disrupts its business as the site offers a service in direct competition with Complainant. The Panel finds that the confusingly similar domain name used by Respondent does disrupt Complainants business by using the confusion to offer competing services constituting bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Based on the evidence in the record, the Panel finds that Respondent receives commission revenues when Internet users utilize its services. Internet users seeking out Complainants services may become confused when they arrive at Respondent’s site. That confusion arises out of the similarity between Complainants GOOGLE mark and Respondent’s <mygooglelocal.com> domain name. Internet users seeking to use Complainants services may instead accidentally use the services of Respondent. The Panel finds that Respondents use of the disputed domain name represents bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mygooglelocal.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 3, 2011
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