Google Inc. v. Trademark Worx LLC a/k/a Richard Yaming
Claim Number: FA1101001370035
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia of Fenwick & West LLP, California, USA. Respondent is Trademark Worx LLC a/k/a Richard Yaming (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlebrowser.com>, registered with Domainfighter.ca 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 January 28, 2011; the National Arbitration Forum received payment on January 28, 2011.
On February 8, 2011, Domainfighter.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <googlebrowser.com> domain name is registered with Domainfighter.ca Inc. and that Respondent is the current registrant of the name. Domainfighter.ca Inc. has verified that Respondent is bound by the Domainfighter.ca 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 February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@googlebrowser.com. Also on February 8, 2011, 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 March 4, 2011, 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 <googlebrowser.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlebrowser.com> domain name.
3. Respondent registered and used the <googlebrowser.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., operates a search engine that provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools. Complainant owns numerous trademark registrations for the GOOGLE mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) and the Korean Intellectual Property Office (“KIPO”):
USPTO
Reg. No. 2,806,075 issued January 20, 2004;
Reg. No. 2,884,502 issued September 14, 2004;
Reg. No. 2,954,071 issued May 24, 2005;
Reg. No. 3,140,793 issued September 12, 2006;
Reg. No. 3,570,103 issued February 3, 2009; and
KIPO
Reg. No. 1,291 issued June 2, 2000.
Respondent, Trademark Worx LLC aka Richard Yaming, registered the <googlebrowser.com> domain name on July 1, 2010. The disputed domain name resolves to an unrelated pay-per-click links page.
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 owns numerous trademark registrations for the GOOGLE mark with trademark authorities around the world, including the USPTO and the KIPO:
USPTO
Reg. No. 2,806,075 issued January 20, 2004;
Reg. No. 2,884,502 issued September 14, 2004;
Reg. No. 2,954,071 issued May 24, 2005;
Reg. No. 3,140,793 issued September 12, 2006;
Reg. No. 3,570,103 issued February 3, 2009; and
KIPO
Reg. No. 1,291 issued June 2, 2000.
The Panel finds that Complainant’s extensive trademark registrations with trademark authorities around the world, including the USPTO and the KIPO, provides substantial evidence that Complainant has rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i). See 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)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <googlebrowser.com> domain name is confusingly similar to Complainant’s GOOGLE mark because the disputed domain name consists of Complainant’s mark combined with the descriptive term “browser” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a descriptive term to Complainant’s mark does not negate a finding of confusing similarity. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that a gTLD does not differentiate the disputed domain name as it is a required element of domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel concludes that Respondent’s <googlebrowser.com> domain name is confusingly similar to Complainant’s GOOGLE mark according to Policy ¶ 4(a)(i).
The Panel finds the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although the presumption against Respondent’s rights and legitimate interests is valid based on Respondent’s default, the Panel will nevertheless consider the evidence according to the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known by the <googlebrowser.com> domain name. Complainant asserts that it has not authorized or licensed Respondent to use its mark in a domain name. The WHOIS information for the disputed domain name lists the registrant as “Trademark Worx LLC aka Richard Yaming,” a name which has no facial relation to the disputed domain name. The Panel finds that this evidence supports the holding that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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 that it is commonly known by the disputed domain name); 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 alleges that Respondent uses the <googlebrowser.com> domain name to resolve to a generic website that has been monetized with unrelated click-through ads that presumably generate revenue for Respondent. The Panel finds that Respondent’s maintenance of a website with no function other than listing presumed pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
Complainant also asserts that Respondent has attempted to sell the <googlebrowser.com> domain name to Complainant. Complainant states that on January 19, 2011, Respondent sent an email to Complainant offering the disputed domain name for sale in exchange for $970.00. After Complainant responded and refused to pay the excessive amount for the domain name containing its trademark, Respondent again contacted Complainant, this time requesting $550.00 in exchange for the disputed domain name. The Panel concludes that Respondent’s offers to sell the <googlebrowser.com> domain name to Complainant indicate that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant contends that Respondent offered to sell the <googlebrowser.com> domain name to Complainant two times, first for $970.00 and later for $550.00. Complainant alleges that these amounts are well in excess of Respondent’s estimated out-of-pocket expenses. The Panel accordingly determines that Respondent’s offer to sell the disputed domain name shows bad faith registration and use for the purposes of Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant argues that Respondent’s incorporation of the GOOGLE mark into the <googlebrowser.com> domain name attracts Internet users seeking Complainant to Respondent’s generic pay-per-click website. As the pay-per-click advertisements create profit for Respondent when clicked, the Panel determines that Respondent aims to commercially benefit from the likelihood of confusion created by the presence of Complainant’s mark in the disputed domain name. The Panel finds that these activities demonstrate Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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 the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlebrowser.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 16, 2010
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