national arbitration forum

 

DECISION

 

Google Inc. v. Benny Xia

Claim Number: FA1105001388563

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA.  Respondent is Benny Xia (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleone.com>, registered with Xinnet Technology Corp.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2011; the National Arbitration Forum received payment on May 16, 2011. The Complaint was submitted in both English and Chinese.

 

On May 16, 2011, Xinnet Technology Corp. confirmed by e-mail to the National Arbitration Forum that the <googleone.com> domain name is registered with Xinnet Technology Corp. and that Respondent is the current registrant of the name.  Xinnet Technology Corp. has verified that Respondent is bound by the Xinnet Technology Corp. 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 May 23, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 13, 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@googleone.com.  Also on May 23, 2011, the Chinese language 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 June 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard  as sole Panelist in this proceeding.

 

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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is the owner of the GOOGLE trademark, which it uses to provide a search engine for its collection of searchable documents, as well as a wide variety of other products and services.

 

Complainant owns registrations for the GOOGLE trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,806,075, filed September 16, 1999; issued January 20, 2004).

 

Respondent registered the disputed domain name on January 5, 2004.

 

The disputed domain name does not resolve to an active website.

 

Respondent’s <googleone.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the GOOGLE trademark in any way. 

 

Respondent does not have any rights to or legitimate interests in the domain name <googleone.com>.

 

Respondent registered and uses the contested <googleone.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the GOOGLE trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s national trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that a complainant had rights in the METLIFE mark as a result of its registration of the mark with the trademark authority of the United States).

To establish rights in a mark, Complainant need not register the mark in the country in which Respondent resides or operates, it being sufficient that Complainant can establish rights in its mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

The relevant date of acquisition of Complainant’s rights in the GOOGLE trademark is the date of application for the mark’s registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application ….”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003):

 

As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.

 

Complainant has presented evidence of its application for registration of its GOOGLE trademark with the USPTO on September 16, 1999 (the mark registration having subsequently been issued January 20, 2004). As a result, Complainant has established rights in the GOOGLE trademark under Policy ¶ 4(a)(i) as of September 16, 1999, which predates Respondent’s registration of the instant domain name on January 5, 2004.  Complainant’s rights in its GOOGLE trademark therefore have priority under the Policy over any rights Respondent might have in its <googleone.com> domain name.

 

Respondent’s <googleone.com> domain name is confusingly similar to Complainant’s GOOGLE trademark. The domain name differs from the mark only by the addition of the generic term “one” and the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark in forming the contested domain fail to distinguish the domain name from the mark under the standards of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark.

 

Similarly, the addition of the generic word “one” is insufficient to distinguish the resulting domain name from the mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where that respondent merely added common terms such as “buy” or “gear” to the end of the mark in forming the domain names); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of the word “advisors” and the gTLD “.com” to a complainant’s mark did not sufficiently distinguish the resulting disputed domain name so as to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). 

 

Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <googleone.com> domain name is confusingly similar to Complainant’s GOOGLE trademark.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights to and legitimate interests in the <googleone.com> domain name. Once Complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to Respondent to prove that it does have such rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:

 

complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.

 

See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a 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.”).

 

Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Therefore, and as a consequence of Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. 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.

 

Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We first observe in this connection that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use the GOOGLE trademark in any way.  Moreover, the WHOIS information for the disputed domain indicates that the registrant is “Benny Xia,” which does not resemble the contested domain.  On this record we are constrained to conclude that Respondent is not commonly known by the <googleone.com> domain name so as to have acquired rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nexnet Tech, FA 881234 (Nat. Arb. Forum Feb 21, 2007) (concluding that a respondent was not commonly known by a contested domain name, and therefore had no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii), where there was no evidence in the record indicating that the respondent was commonly known by the domain).

 

We next note that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to an inactive website.  Respondent’s failure to use the disputed domain name for any purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it had failed to make any active use of the domain name); see also VICORP Rests, Inc. v. Paragigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that a respondent’s failure to use a disputed domain name for several years was not 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).

 

The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

When conducting a Policy ¶ 4(a)(iii) bad faith analysis, the Panel has discretion to consider the totality of the circumstances presented by the available facts because the factors enumerated for this purpose in Policy ¶ 4(b) are not intended to be exhaustive.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):

 

[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.

 

See also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000): “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered and is being used in bad faith.”

 

We turn then to the allegations of bad faith registration and use of the contested domain name set out in the Complaint which gives rise to this proceeding.

 

Complainant contends that Respondent’s failure actively to use the disputed domain name is itself evidence of bad faith.  In this Complainant is correct.  Respondent’s failure to make any evident use of, or demonstrable preparations to use, the disputed domain name, beyond mere registration of the domain, is indeed evidence of bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):

 

The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.

 

Moreover, it is evident on this record that Respondent had constructive notice, if not actual knowledge, of Complainant’s rights in the GOOGLE trademark when it registered the disputed <googleone.com> domain name.  This is an indication of Respondent’s bad faith registration and use of the disputed domain under Policy ¶ 4(b)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):

 

[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.

 

See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive knowledge of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).

 

For these reasons, the Panel finds that the proof elements of Policy ¶ 4(a)(iii) have been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <googleone.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

 

Terry F. Peppard , Panelist

Dated:  June 28, 2011

 

 

 

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