Google Inc. v. Zhangmengyun / Topedu Ltd.
Claim Number: FA1109001405679
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Zhangmengyun / Topedu Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleideas.org>, registered with Xiamen eName Network Technology Corporation Limited d/b/a eName Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2011; the National Arbitration Forum received payment on September 6, 2011. This Complaint was submitted in both English and Chinese.
On September 1, 2011, Xiamen eName Network Technology Corporation Limited d/b/a eName Corp. confirmed by e-mail to the National Arbitration Forum that the <googleideas.org> domain name is registered with Xiamen eName Network Technology Corporation Limited d/b/a eName Corp. and that Respondent is the current registrant of the name. Xiamen eName Network Technology Corporation Limited d/b/a eName Corp. has verified that Respondent is bound by the Xiamen eName Network Technology Corporation Limited d/b/a eName Corp. 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 September 12, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 3, 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@googleideas.org. Also on September 12, 2011, the Chinese 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 October 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese 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 <googleideas.org> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleideas.org> domain name.
3. Respondent registered and used the <googleideas.org> 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 its mark in connection with a comprehensive array of search tools. Complainant has provided the Panel with evidence of its registration of the GOOGLE mark with trademark authorities throughout the world, including the following: the United States Patent and Trademark Office (USPTO) (Reg. No. 2,806,075 registered January 20, 2004); the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,410,931 registered January 12, 2006); the Intellectual Property Office of Singapore (“IPOS”) (Reg. No. T00/20973G registered December 2, 2000); and IP Australia (Reg. No. 1,049,124 registered April 4, 2005).
Respondent, Zhangmengyun / Topedu Ltd., registered the <googleideas.org> domain name on September 8, 2010. The disputed domain name displays links to sponsored listings under such headings as “Corporate Gift Ideas,” “Local 1-Day Coupons,” and “Uncommon Birthday Gifts.” The website also has an answer request page where Internet users can enter an offer to buy the disputed domain name.
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.
Given Complainant’s worldwide registrations of its GOOGLE mark, the Panel finds that Complainant has rights in the GOOGLE mark pursuant to Policy ¶ (a)(i). 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).
Respondent’s <googleideas.org> domain name is confusingly similar to Complainant’s mark. The disputed domain name wholly incorporates Complainant’s GOOGLE mark and merely adds the generic term “ideas” and the generic top-level domain (“gTLD”) “.org.” It is well established that the addition of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See 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); see also 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.”).
The addition of a generic term to a domain name fails to distinguish the domain name from the incorporated mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, the Panel finds that Respondent’s <googleideas.org> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant states that Respondent has neither rights nor legitimate interests in the <googleideas.org> domain name. A complainant must first make a prima facie case in support of its claims before shifting the burden to the respondent to disprove the complainant’s allegations. 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 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.”). The Panel finds that Complainant has made a prima facie case. The Panel is without the benefit of a response from Respondent and therefore may assume Respondent has no rights or legitimate interests. 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); see also 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.”). The Panel will nonetheless review the record under Policy ¶ 4(c) to determine if Respondent has rights or legitimate interests in the <googleideas.org> domain name.
The WHOIS record for the <googleideas.org> domain name lists “Zhangmengyun / Topedu Ltd.” as the domain name registrant. The Panel finds that this does not reflect the <googleideas.org> domain name in any way. Further, Complainant argues that Respondent has not been authorized or licensed to use the GOOGLE trademark in any way. Therefore, the Panel finds that Respondent is not commonly known by the <googleideas.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <googleideas.org> domain name displays links to a variety of unrelated, commercial websites. These links, with headings such as “Birthday Gifts for Men” and “Corporate Gift Ideas,” imply to the Panel that Respondent receives compensation for their display to unsuspecting Internet users. Panels have traditionally held, in such cases as Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), that the use of a disputed domain name to display commercial links to websites which are unrelated to complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel here finds that Respondent’s use of the <googleideas.org> is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s offer to sell the domain name is evidence of bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale). Respondent includes on its <googleideas.org> domain name a form through which Internet users can offer amounts they are willing to pay for the purchase of the domain name. The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(i) due to Respondent’s willingness to entertain offers for purchase of the domain name.
Respondent’s registration and use of the <googleideas.org> domain name was done in bad faith. The disputed domain name <googleideas.org> has been found confusingly similar to Complainant’s GOOGLE mark. As a result, many Internet users seeking Complainant’s website will instead find themselves at Respondent’s website. Internet users may become confused as whether Complainant sponsors Respondent’s website at <googleideas.org>. Due to the goodwill that Complainant has established in its GOOGLE mark, some Internet users will inevitably click through the displayed links, thus generating revenue for Respondent. The Panel therefore finds that Respondent’s <googleideas.org> domain name was registered and is being used in bad faith for commercial gain under Policy ¶ 4(b)(iv). 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
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 <googleideas.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 19, 2011
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