Google Inc. v. Dyndns
Claim Number: FA1108001405326
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Dyndns (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com>, registered with DotRegistrar, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 31, 2011.
On August 31, 2011, DotRegistrar, LLC confirmed by e-mail to the National Arbitration Forum that the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> disputed domains are registered with DotRegistrar, LLC and that Respondent is the current registrant of the names. DotRegistrar, LLC has verified that Respondent is bound by the DotRegistrar, LLC 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 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@googlefair.com, postmaster@googlecon.com, postmaster@googlejam.com, postmaster@googleworld.com, postmaster@gmailbox.com, and postmaster@gmailme.com. Also on August 31, 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 September 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <googlefair.com>, <googlecon.com>, <googlejam.com>, and <googleworld.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
Respondent’s <gmailbox.com>, and <gmailme.com> domain names are confusingly similar to Complainant’s GMAIL mark.
2. Respondent does not have any rights or legitimate interests in the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names.
3. Respondent registered and used the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., was established in 1997 and since that time has operated its search engine services at its <google.com> domain name. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GOOGLE mark (e.g., Reg. No. 2,806,075 filed September 16, 1999; registered January 20, 2004). In 1998, Complainant began offering e-mail and electronic messaging services under its GMAIL mark. Complainant owns two trademark registrations with the USPTO for its GMAIL mark:
Reg. No. 3,150,462 filed April 2, 2004; registered October 3, 2006
Reg. No. 3,353,237 filed April 7, 2004; registered December 11, 2007.
Respondent, Dyndns, registered the <googlefair.com>, <googlecon.com>, <googlejam.com>, and <googleworld.com> domain names no earlier than March 3, 2004 and the <gmailbox.com>, and <gmailme.com> domain names on March 31, 2004. All of the disputed domain names fail to resolve to active websites.
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 provides evidence that it owns multiple trademark registrations with the USPTO for its GOOGLE mark (e.g., Reg. No. 2,806,075 filed September 16, 1999; registered January 20, 2004). Complainant also owns two trademark registrations for its GMAIL mark with the USPTO:
Reg. No. 3,150,462 filed April 2, 2004; registered October 3, 2006
Reg. No. 3,353,237 filed April 7, 2004; registered December 11, 2007.
Past panels have determined that trademark registrations with the USPTO are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See 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); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Previous panels have also found that a complainant’s rights in a mark date back to the filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the 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 and predate [the] respondent’s registration”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Based on this precedent and the evidence in the record, the Panel determines that Complainant has established rights in its GOOGLE and GMAIL marks under Policy ¶ 4(a)(i), dating back to September 16, 1999 and April 2, 2004 respectively.
Complainant contends that its rights in the GMAIL mark actually date back to 1998. Complainant’s trademark registrations with the USPTO list January 20, 1998 as the date of first use of the GMAIL mark. Complainant owns the <gmail.com> domain name which it uses to offer its e-mail and messaging services to the public. Complainant’s GMAIL services have received multiple awards and has been continuously and extensively promoted since its inception. Due to Complainant’s longstanding use of its GMAIL mark, the Panel concludes that Complainant has established common law rights in its GMAIL mark under Policy ¶ 4(a)(i), dating back to January 20, 1998. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant claims the <googlefair.com>, <googlecon.com>, <googlejam.com>, and <googleworld.com> domain names are confusingly similar to Complainant’s GOOGLE mark. All of the disputed domain names contain Complainant’s entire GOOGLE mark and simply also contain a generic term, such as “fair,” “con,” “jam,” or “world,” and the generic top-level domain (“gTLD”) “.com.” As the panel finds that these additions are insufficient to distinguish the disputed domain names from Complainant’s mark, the Panel holds that Respondent’s <googlefair.com>, <googlecon.com>, <googlejam.com>, and <googleworld.com> domain names are confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also 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.”).
Complainant argues that Respondent’s <gmailbox.com>, and <gmailme.com> domain names are confusingly similar to Complainant’s GMAIL mark. The Panel notes that the disputed domain names combine Complainant’s GMAIL mark with the gTLD “.com” and either the descriptive term “box” or the generic term “me.” Similar to its decision above, the Panel determines that the alterations to Complainant’s mark do not remove the disputed domain names from the realm of confusing similarity under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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 finds Policy ¶ 4(a)(i) has been established.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by any of the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names. The WHOIS information lists “Dyndns” as the registrant of the disputed domain names, which is not similar to any of the domain names. Complainant alleges that it has not authorized or licensed Respondent to use its GOOGLE or GMAIL marks in a domain name, and Respondent has failed to rebut these allegations with any evidence that it is commonly known by the disputed domain names. Consequently, the Panel finds that Respondent is not commonly known by the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names 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).
Respondent’s <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names all fail to resolve to an active website. The Panel determines that such a failure to make an active use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered six domain names that are confusingly similar to Complainant’s GOOGLE and GMAIL marks. The Panel determines that Respondent’s registration and use of six infringing domain names is evidence of bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
Respondent has failed to make an active use of the <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names, which the Panel concludes is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also 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).
Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the GOOGLE and GMAIL marks. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Under Policy ¶ 4(a)(iii), the Panel determines that Respondent did have actual notice of Complainant’s rights in the GOOGLE and GMAIL marks, which constitutes bad faith registration and use.
The Panel finds Policy ¶ 4(a)(iii) 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 <googlefair.com>, <googlecon.com>, <googlejam.com>, <googleworld.com>, <gmailbox.com>, and <gmailme.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 6, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page