Google Inc. v. kk las aka nan
Claim Number: FA1106001392554
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is kk las aka nan (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlevacancies.com>, registered with 1&1 Internet AG.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 7, 2011.
On June 8, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <googlevacancies.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@googlevacancies.com. Also on June 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 July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googlevacancies.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlevacancies.com> domain name.
3. Respondent registered and used the <googlevacancies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., owns the GOOGLE mark which it uses in connection with its Internet search services. Additionally, Complainant uses its mark in connection with its employment and hiring services, some of which are online. Complainant owns federal trademark registrations for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 issued January 20, 2004).
Respondent, kk las aka nan, registered the <googlevacancies.com> domain name on January 17, 2010. The domain name resolves to a webpage which advertises that Google is hiring and that interested Internet users can view openings with the links available on the website, but which only displays links to unrelated advertising and pop-up ads.
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 the GOOGLE mark. Previous panels have found that registration with a federal trademark authority such as the USTPO is sufficient to establish rights in a mark. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Additionally, the trademark registration need not be in the country in which the respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Although Respondent has not provided a valid address for which Complainant can submit evidence of trademark registration with that country, Complainant has provided evidence of registration of the GOOGLE mark with the USPTO (e.g., Reg. No. 2,806,075 issued January 20, 2004). The Panel finds that Complainant has established rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is confusingly similar to its GOOGLE mark. Panels have found that the addition of a generic top-level domain (“gTLD”) is insufficient to distinguish a disputed domain name from a complainant’s mark. 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.”); see also 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). Panels have also found that the addition of a descriptive term to a mark in a domain name does not make the domain name distinctive from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business”). Complainant’s mark is fully incorporated in the disputed domain name. The only changes made to the mark are the addition of the gTLD “.com” and the descriptive term “vacancies.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the <googlevacancies.com> domain name. The Panel finds that Complainant has made a prima facie case in support of this allegation. Once a complainant has made a prima facie case, the burden shifts to the respondent to provide the panel with evidence that it does have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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”). The Panel may assume, due to Respondent’s failure to submit a response to the Complaint, that Respondent lacks rights and 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Despite this permitted presumption, the Panel will review the evidence to determine if Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Panels have found that WHOIS information often determines whether a respondent is commonly known by a disputed domain name. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Respondent has not been authorized by Complainant to use its GOOGLE mark in any way. Additionally, the WHOIS information for the <googlevacancies.com> does not suggest that there is a connection between Respondent and the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website which displays click-through links and numerous pop-up advertising pages. Respondent presumably receives monetary compensation for the Internet users that it diverts to these links and advertisements. Panels have found in the past that the use of a confusingly similar domain name in order to generate revenue by diverting Internet users away from a complainant’s webpage is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. 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 good or services); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 finds that Respondent’s use of the disputed domain name to redirect Internet users away from Complainant’s site in order to profit from their confusion is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The disputed domain name resolves to a webpage which substantially imitates Complainant’s official job listing website. Previous panels have found that the use of a disputed domain name by a respondent in order to appear to be affiliated with or sponsored by a complainant when such association is not the case is evidence of a lack of rights and legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Respondent displays language similar to that which Complainant’s actual hiring website displays concerning where to look for openings. Internet users will assume that this replication of information is present due to an association with Complainant. Respondent uses this presumed connection to lead Internet users through links and pop-up advertisements for which Respondent likely receives benefits. The Panel finds that Respondent’s use of the disputed domain name to pass off as being affiliated with Complainant is a violation of Policy ¶ 4(a)(ii) and demonstrates that Respondent does not have rights or legitimate interests in the <googlevacancies.com> domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The disputed domain name resolves to a website which falsely claims to provide links to hiring opportunities for Complainant business. Panels have found that, where a respondent uses a disputed domain name in a way which disrupts the business of a complainant, the domain name was used and registered in bad faith. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Complainant offers job postings on its official website dedicated to employment and hiring. Respondent, by falsely offering links to the same jobs postings, completes with Complainant as to the Internet traffic it receives. The diversion of Internet users to Respondent’s webpage, who were originally seeking Complainant’s webpage, disrupts Complainant’s business. The Panel finds that Respondent’s registration and use of the disputed domain name demonstrates Respondent’s actions being in bad faith pursuant to Policy ¶ 4(b)(iii).
The attraction for commercial gain for respondents registering domain names which are confusingly similar to complainants’ trademarks has been found to be evidence that the domain names were registered and used in bad faith. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). Respondent’s <googlevacancies.com> domain name displays links and pop-up ads which, the Panel infers, Respondent receives compensation for displaying. As such, Respondent’s intention would ultimately be to generate the most revenue. The easiest way to do this is to register and use a confusingly similar domain name. The Panel finds that Respondent’s registration and use of a confusingly similar domain name due to the potential for commercial gain demonstrates that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s imitation of its webpage is further evidence of bad faith registration and use of the disputed domain name. Panels have found the registration and use of a domain name to have been done in bad faith where the respondent used the domain name in order to appear affiliated with a complainant by using the complainant’s trademark and information off of the complainant’s website. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Respondent took language from Complainant’s webpage and put it as a heading on the disputed domain name. Additionally, Respondent uses Complainant’s trademark name in a way which suggests sponsorship or authorized use. The Panel finds that this registration and use of the disputed domain name in a violation of Policy ¶ 4(a)(iii) and was done in bad faith by Respondent.
The Panel finds that Policy ¶ 4(a)(iii) is 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 <googlevacancies.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 18, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page