Google Inc. v. FooMeme / Marshall Coffy
Claim Number: FA1102001372553
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia of Fenwick & West LLP, California, USA. Respondent is FooMeme / Marshall Coffy (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlefiber.net> and <googlefiber.org>, registered with GoDaddy.com, 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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 11, 2011.
On February 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlefiber.net> and <googlefiber.org> domain names are 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 February 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@googlefiber.net and postmaster@googlefiber.org. Also on February 15, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googlefiber.net> and <googlefiber.org> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlefiber.net> and <googlefiber.org> domain names.
3. Respondent registered and used the <googlefiber.net> and <googlefiber.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is the provider of Internet search services and maintains a large collection of searchable documents. Complainant owns multiple trademark registrations for its GOOGLE mark with trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 issued September 14, 2004).
Respondent, FooMeme / Marshall Coffy, registered the disputed domain names on February 12, 2010. The disputed domain names fail to resolve to active websites.
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 rights in its GOOGLE mark based on its USPTO registration (e.g., Reg. No. 2,884,502 issued September 14, 2004). The Panel finds that registrations of a mark with a trademark authority, such as the USPTO, are conclusive evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <googlefiber.net> and <googlefiber.org> domain names are confusingly similar to Complainant’s GOOGLE mark. The disputed domain names both fully incorporate Complainant’s mark. Additionally, both disputed domain names add the term “fiber,” which Complainant asserts references its plans for a trial-only, cutting edge broadband network in the United States, which Complainant announced on February 10, 2010, just two days prior to the registration of the disputed domain names. Finally, the disputed domain names add the generic top-level domains (“gTLDs”) “.net” and “.org.” The Panel finds that the addition of a word descriptive of Complainant’s business and a gTLD are not additions that remove the disputed domain names from the realm of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also 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.”). Appropriately, the Panel concludes that Respondent’s <googlefiber.net> and <googlefiber.org> domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant has established a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. Therefore, the burden has effectively shifted to Respondent to provide conclusive evidence that it does have rights or legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent has failed to submit any sort of response to these proceedings, leaving the Panel to infer that Respondent does in fact lack all rights and legitimate interests in both the <googlefiber.net> and <googlefiber.org> domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record, keeping in mind the factors contained in Policy ¶ 4(c), in order to make a complete determination as to whether Respondent possesses any rights or legitimate interests in either of the disputed domain names.
Complainant asserts that Respondent is not commonly known by the disputed domain names or any other name containing Complainant’s GOOGLE mark. The WHOIS information provided by Complainant indicates that the registrant of the <googlefiber.net> and <googlefiber.org> domain names is “FooMeme / Marshall Coffy.” Complainant further asserts that it has not authorized or licensed Respondent to use its GOOGLE mark in any way and that unauthorized use of a domain name incorporating Complainant’s mark is strong evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent is not commonly known by the <googlefiber.net> and <googlefiber.org> domain names under Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent’s disputed domain names fail to resolve to active websites. Screenshots of the websites resolving from each of the disputed domain names show an identical message displayed on each: “Sorry! This site is not currently available.” The Panel finds that Respondent’s failure to make an active use of the <googlefiber.net> and <googlefiber.org> domain names is evidence that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges, and submits evidence to support, that Respondent’s disputed domain names both fail to resolve to active websites. The Panel determines that Respondent’s failure to make an active use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlefiber.net> and <googlefiber.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 22, 2011
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