Google Inc. v. Milan Kovac
Claim Number: FA1108001402160
Complainant is Google Inc. (“Complainant”), represented by Michael A. Blasie of Cooley LLP, California, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleshop.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2011; the National Arbitration Forum received payment on August 9, 2011. The Complaint was submitted in both English and Slovak.
On August 13, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <googleshop.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. 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 August 23, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of September 12, 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@GOOGLESHOP.COM. Also on August 23, 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 September 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <googleshop.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleshop.com> domain name.
3. Respondent registered and used the <googleshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is the owner of the GOOGLE mark. Complainant uses this mark in connection with one of the world’s largest databases of searchable documents. Complainant has several registrations for the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered January 20, 2004). Additionally, Complainant owns a wide variety of registrations for the GOOGLE mark throughout the world. The following is a list of just some of these registrations:
Country Mark Reg. No. Reg. Date
Australia Google 1049124 April 4, 2005
China Google 1451705 September 28, 2000
Norway Google 211609 November 8, 2001
Singapore Google T00/20973G December 2, 2000
Respondent, Milan Kovac, registered the <googleshop.com> domain name on April 14, 2008. The disputed domain name previously resolved to a website which advertised shopping services and products. The disputed domain name currently resolves to an inactive website.
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 the GOOGLE mark. Panels have previously held that the registration of a mark with a federal trademark authority is sufficient for a complainant to demonstrate rights under Policy ¶ 4(a)(i) regardless of the locations of the parties. 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 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). Complainant has provided the Panel with proof of registrations for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered January 20, 2004) with the USPTO. Additionally, Complainant has presented proof of registration of its mark in numerous other countries throughout the world. Given Complainant’s extensive registration of the GOOGLE mark worldwide, the Panel finds that Complainant has rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues also that Respondent’s <googleshop.com> domain name is confusingly similar to its mark. Respondent has fully-incorporated Complainant’s GOOGLE mark within the disputed domain name. To that mark, Respondent adds the generic term “shop” and the generic top-level domain (“gTLD”) “.com.” The Panel, guided by previous decisions in cases such as Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004), and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), finds that the addition of generic terms and gTLDs fails to distinguish a domain name from the mark it is allegedly infringing upon. Therefore, the Panel finds that Respondent’s <googleshop.com> domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
A complainant first holds the burden to make a prima facie case in support of its claims. However, once this is done, the burden shifts to the respondent to provide evidence disputing the complainant’s claims. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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). Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this claim. However, the Panel is left without the benefit of a response from Respondent. Thus, the Panel will make all reasonable inferences available. 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). The Panel will review the record for any information suggesting that Respondent does have either rights or legitimate interests.
Complainant requests that the Panel find that Respondent is not commonly known by the disputed domain name. According to the panels in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), this determination may be made by reviewing Complainant’s claims about Respondent as well as the WHOIS record for the <googleshop.com> domain name. The WHOIS record for the <googleshop.com> domain name lists “Milan Kovac” as the domain name registrant. The Panel finds that this fails to support a finding that Respondent is commonly known by the disputed domain name because it does not reflect the domain name in any substantive way. Furthermore, Complainant claims that Respondent does not have authorization from Complainant to be using the GOOGLE mark in any way. Given the available information on the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The disputed domain name previously resolved to a website which advertised shopping services and products. The Panel infers that Respondent is compensated for the display of this content. The display of links or advertisements to unrelated websites is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark). Thus, the Panel finds that Respondent’s prior use of the <googleshop.com> domain name to advertise shopping services and products to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant next argues that Respondent’s current, inactive use of the <googleshop.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. The Panel finds that inactive use of a website can demonstrate a lack of rights and legitimate interests based on past panels’ decisions in cases like Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), and Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001). Therefore, the Panel finds that Respondent, by maintaining the <googleshop.com> domain name as an inactive website, has demonstrated its lack of rights and legitimate interests in said domain name under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
The Panel finds that when a disputed domain name resolves to a website which takes advantages of Internet users’ confusion so that the respondent may profit, the disputed domain name was registered and used in bad faith. 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 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). The <googleshop.com> domain name previously resolved to a website which displayed advertisements to companies unrelated to Complainant for which Respondent presumably received compensation. Internet users, confronted with a domain name which is confusingly similar to the GOOGLE mark, will become confused as to whether the <googleshop.com> domain name is affiliated with Complainant. Presuming that there is a connection, the Internet users will then click through the advertisements and Respondent will commercially gain. Therefore, the Panel finds that the registration and use of the <googleshop.com> domain name was done as a result of the potential for commercial gain pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s holding of the currently inactive website demonstrates bad faith registration and use. Previous panels have agreed with the assertion that passive holding of a domain name indicates bad faith. See 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); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel thus finds that Respondent’s registration and use of the <googleshop.com> domain name, which is currently inactive, was done in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <googleshop.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 15, 2011
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