Google Inc. v. Handwares, Inc. a/k/a Bryan Gazaui
Claim Number: FA1104001386119
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is Handwares, Inc. a/k/a Bryan Gazaui (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <poweredbygoogle.com>, registered with eNom, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2011; the National Arbitration Forum received payment on April 28, 2011.
On April 29, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <poweredbygoogle.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@poweredbygoogle.com. Also on April 29, 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 May 24, 2011, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant, Its Business and Its Mark
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 was found to be one of the top ten Best Global Brands in each of the last three years. Additionally, 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.
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/.
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 individual located in Ventura, California, United States of America.
12. Registrant registered the Domain Name on April 25, 2008.
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 March 18, 2011, Complainant sent an email to Registrant explaining Google’s rights and requesting transfer of the Domain Name.
· On March 25, 2011, Complainant sent a follow up email requesting a response.
· Registrant did not respond.
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 April 25, 2008, the registration date for the Domain Name. Google owns various U.S. registrations issued prior to, or resulting from applications filed prior to, April 25, 2008. 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. A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another’s mark. See, e.g., Google Inc. v. Kun Zhang, FA0901001245131 (Nat’l 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 domain name); Google Inc. v. Babaian, FA0708001060992 (Nat’l 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 domain names).
19. The Domain Name merely adds the common terms “powered by” to the GOOGLE Mark. In the online space, “powered by” refers to the developer or provider of a website. In fact, Complainant uses the “Powered by Google” phrase to identify Complainant as the source of search results. Complainant’s branding guidelines state that the “Powered by Google” phrase is to be used to “indicate that Google is the sole provider of Web or Images search results and sponsored listings displayed on the results page.” Since the Domain Name consists of Complainant’s exact naming convention, users seeing the Domain Name are even more likely to believe the content and Domain Name are provided by Complainant.
20. 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).
21. 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.
22. 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).
23. 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 Handwares, Inc. aka Bryan Gazaui.
24. 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).
25. 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).
26. 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).
27. 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).
28. 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”).
29. 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.
Complainant Google Inc. was created in 1997 and operates as a widely used Internet search service throughout the world. Complainant owns the GOOGLE mark and uses the mark in connection with its search engine and related tools. Complainant owns numerous trademark registrations for its GOOGLE mark including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 issued Sept. 14, 2004).
Respondent Handwares, Inc. a/k/a Bryan Gazaui registered the <poweredbygoogle.com> domain name on April 25, 2008. The disputed domain name redirects Internet users to a directory website featuring third-party links to various commercial websites unrelated to Complainant’s business.
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 argues it has established rights in the GOOGLE mark. Previous panels have determined registration of a mark with a trademark authority is one way in which a complainant may establish rights in a mark. 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 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 holds numerous trademark registrations for its GOOGLE mark around the world, including registrations with the USPTO (e.g., Reg. No. 2,884,502 issued Sept. 14, 2004). The Panel finds Complainant has demonstrated its rights in the GOOGLE mark, pursuant to Policy ¶4(a)(i), through its registration with a trademark authority.
Complainant also argues Respondent’s <poweredbygoogle.com> domain name is confusingly similar to its GOOGLE mark. The disputed domain name utilizes Complainant’s entire GOOGLE mark and changes it only by adding the generic terms “powered by” and the generic top-level domain (“gTLD”) “.com.” Complainant claims the phrase “powered by” refers to the developer or provider of a website. The Panel finds the addition of these generic words or phrases does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Also, the affixation of a gTLD is not a factor in a Policy 4(a)(i) analysis. 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.”). Therefore, the Panel concludes Respondent’s disputed domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant contends Respondent lacks rights and legitimate interests in the <poweredbygoogle.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated “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.” Here, Complainant has made out a prima facie case in the Complaint. Respondent failed to submit a response to the Complaint, which may be interpreted as an admission Respondent has no rights or legitimate interests under Policy ¶4(a)(ii). 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 look to the record to decide whether Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant claims Respondent is not commonly known by the <poweredbygoogle.com> domain name. The WHOIS information identifies Respondent as “Handwares, Inc. / Bryan Gazaui,” which is not similar to the disputed domain name. Complainant also claims Respondent is not authorized to use its GOOGLE mark within the disputed domain name. The Panel finds Respondent is not commonly known by the <poweredbygoogle.com> domain name, according to Policy 4(c)(ii), because nothing in the record indicates otherwise. 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’s disputed domain name resolves to a directory website with third-party links to various commercial sites unrelated to Complainant’s online search engine business. There is a high likelihood Respondent collects click-through fees from these links. The Panel finds Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to a directory website for its own benefit 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent uses the <poweredbygoogle.com> domain name to host a directory website with third-party links to commercial sites. The Panel infers Respondent likely receives click-through fees from these links. By using Complainant’s mark within the disputed domain name, Respondent creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the resolving website and the links displayed. Respondent attempts to capitalize off this confusion by generating click-through fees. The Panel finds such registration and use of the disputed domain name for this purpose is evidence of bad faith under Policy ¶4(a)(iii). 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 Policy ¶4(a)(iii) 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 <poweredbygoogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 1, 2011
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