Google Inc. v. This Domain is 4 Sale
Claim Number: FA1106001392893
Complainant is Google Inc. (“Complainant”), represented by Karen K. Won of Cooley LLP, California, USA. Respondent is This Domain is 4 Sale (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.org>, registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 13, 2011.
On June 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.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 June 13, 2011, the Forum served the Complaint and all Annexes, including a 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@dvrgoogle.com, postmaster@googledomainnames.com, postmaster@googledomains.net, postmaster@googledomainregistrar.com, postmaster@googlefantasy.com, postmaster@googlefantasyfootball.com, postmaster@googlefantasysports.com, postmaster@googlesuggests.com, postmaster@googlesuggests.net, and postmaster@googlesuggests.org. Also on June 13, 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 8, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.org> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.org> domain names.
3. Respondent registered and used the <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.org> domain names 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. Complainant owns trademark registrations for the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 issued January 20, 2004).
Respondent, This Domain is 4 Sale, registered the <dvrgoogle.com> domain name on November 1, 2005; the <googledomainnames.com> domain name on February 1, 2005; the <googledomains.net> domain name on February 1, 2005; the <googledomainregistrar.com> domain name on February 1, 2005; the <googlefantasy.com> domain name on October 23, 2005; the <googlefantasyfootball.com> domain name on October 23, 2005; the <googlefantasysports.com> domain name on October 23, 2005; the <googlesuggests.com> domain name on December 11, 2004; the <googlesuggests.net> domain name on December 11, 2004; and the <googlesuggests.org> domain name on December 11, 2004. The disputed domain names resolve to inactive web pages.
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 established rights in its GOOGLE mark. Registration with a federal trademark authority is sufficient for a complainant to establish rights in a mark. 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 Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Complainant has provided evidence of registration of its GOOGLE mark with the USPTO (e.g., Reg. No. 2,806,075 issued January 20, 2004). The Panel thus finds that Complainant has established rights in the GOOGLE mark under Policy ¶ 4(a)(i).
The disputed domain names have been alleged to be confusingly similar to Complainant’s mark. Each of the disputed domain names has been outfitted with a generic top-level domain (“gTLD”) as well as one or two generic terms. Panels have found that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); 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.”). Similarly, the addition of generic terms fails to alter the disputed domain to the extent to which it is no longer confusingly similar to the complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The only changes made to Complainant’s fully-incorporated mark in the disputed domain names is the addition of gTLDs and generic terms. The Panel finds that the disputed domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Panels have found that once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does in fact have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 finds that Complainant has made a prima facie case. Respondent failed to respond to the Complaint. Therefore, the Panel may presume that the failure to respond is Respondent’s admission of a lack of rights and legitimate interests. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will review the record to determine if Respondent has rights or legitimate interest under Policy ¶ 4(c).
Respondent is allegedly not commonly known by any of the disputed domain names. All information provided by the parties, including the WHOIS information for disputed domain names, is considered in a Policy ¶ 4(c)(ii) analysis. See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). No information in the WHOIS listings for any of the disputed domain names suggests that Respondent is commonly known by any of them. Additionally, Respondent has no affiliation with Complainant, and Complainant has not given Respondent permission to use the GOOGLE mark in any capacity. Therefore, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
The disputed domain names do not resolve to active websites. Failure to make an active use of a domain name traditionally suggests to panels that the respondent responsible for their registration has no rights or legitimate interests in the domain names. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also 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)). Respondent has not made an active use of any of the disputed domain names. Furthermore, there is no information in the record to suggest that Respondent will soon make an active use of the disputed domain names. As such, the Panel finds that Respondent has not used the disputed domain names for a protected Policy ¶¶ 4(c)(i) bona fide offering of goods or services or a Policy 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has fulfilled all elements of Policy ¶ 4(a)(ii).
The Panel will next determine if, under the Policy, Respondent has registered and used the disputed domain name in bad faith. While Policy ¶ 4(b) provides a list of reasons for which the Panel may find bad faith present, the list is not 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 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.”). Rather, the Panel may consider the totality of the circumstances in order to determine whether bad faith has been present in the registration and use of the disputed domain names.
Panels have found that inactive holding of a disputed domain name is sufficient to demonstrate bad faith registration and use. See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Respondent’s disputed domain names all resolves to inactive web pages. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names was done in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel holds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dvrgoogle.com>, <googledomainnames.com>, <googledomains.net>, <googledomainregistrar.com>, <googlefantasy.com>, <googlefantasyfootball.com>, <googlefantasysports.com>, <googlesuggests.com>, <googlesuggests.net>, and <googlesuggests.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 15, 2011
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