Google Inc. v. Milan Kovac
Claim Number: FA1105001391350
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googledot.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2011. The Complaint was submitted in both Slovak and English.
On June 5, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <googledot.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com and that Respondent is the current registrant of the name. H Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com 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 June 13, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of July 5, 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@googledot.com. Also on June 13, 2011, the Slovak 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 July 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googledot.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googledot.com> domain name.
3. Respondent registered and used the <googledot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is an Internet search engine search that maintains a large collection of searchable documents and provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools. Complainant owns trademark registrations for the GOOGLE mark with many trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), the Uzbekistan State Patent Office (“USPO”), the Yemen Ministry of Industry and Commerce (“YMIC”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
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;
USPO
Reg. No. 14,019 issued April 14, 2005;
YMIC
Reg. No. 27,552 issued May 8, 2006; and
OHIM
Reg. No. 004316642 issued April 18, 2006.
Respondent, Milan Kovac, registered the <googledot.com> domain name on April 20, 2009. The disputed domain name resolves to a website that offers search engine services that compete with those of Complainant, as well as generic pay-per-click links.
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 trademark registrations for the GOOGLE mark with many trademark authorities around the world, including the USPTO, the USPO, the YMIC, and the OHIM:
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;
USPO
Reg. No. 14,019 issued April 14, 2005;
YMIC
Reg. No. 27,552 issued May 8, 2006; and
OHIM
Reg. No. 004316642 issued April 18, 2006.
The Panel finds that as a result of registering its GOOGLE mark with the trademark authorities of various countries around the world, Complainant has firmly established its rights in the mark for the purposes of Policy ¶ 4(a)(i). See 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); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant asserts that Respondent’s <googledot.com> domain name is confusingly similar to Complainant’s GOOGLE mark because the domain name consists of Complainant’s mark combined with the generic term “dot” and the generic top-level domain (“gTLD”) “.com.” The Panel holds that the addition of a generic term to Complainant’s mark does not prevent a finding of confusing similarity. 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); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also determines that an attached gTLD does not alleviate confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore finds that Respondent’s <googledot.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The Panel concludes Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove rights and legitimate interests in the disputed domain name. The Panel concludes that Respondent has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the GOOGLE mark or the disputed domain name. The WHOIS information for the <googledot.com> domain name identifies the registrant as “Milan Kovac,” which has no facial connection to the disputed domain name. Complainant also denies that it has ever authorized or licensed Respondent to use the GOOGLE mark for any purpose. As a result, the Panel determines that Respondent is not commonly known by the disputed domain name and thus does not possess rights or legitimate interests in the disputed domain name pursuant to 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 <googledot.com> domain name resolves to a website featuring a search engine, similar to Complainant’s, that returns a list of monetized pay-per-click links when an Internet user enters a search term. The Panel finds that this use is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements).
The Panel concludes Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s operation of a search engine at the <googledot.com> domain name competes with Complainant and disrupts Complainant’s business by offering the same services as Complainant under Complainant’s mark. Complainant contends, and the Panel agrees, that this activity shows 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant argues that Respondent registered a variation of Complainant’s GOOGLE mark as the <googledot.com> domain name in order to attract Internet users to Respondent’s resolving website featuring a competing search engine and generic pay-per-click links. Complainant asserts that the GOOGLE mark in the disputed domain name and the similarity of services offered on the resolving website create a likelihood that consumers will be confused as to the affiliation or sponsorship of the resolving website. Complainant alleges that Respondent profits from these activities through pay-per-click fees. The Panel accordingly holds that Respondent’s efforts to misleading attract and profit from Internet users seeking Complainant reveal Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also 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).
The Panel concludes Policy ¶ 4(b)(iv) has 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 <googledot.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 14, 2011
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