Google Inc. v. Metin Ozdemir
Claim Number: FA1110001410771
Complainant is Google Inc. (“Complainant”), represented by Kathlyn Querubin of Cooley LLP, California, USA. Respondent is Metin Ozdemir (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kilogoogle.com>, <kilogoogle.net>, and <takeagoogle.com>, registered with Register.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2011; the National Arbitration Forum received payment on October 11, 2011.
On October 11, 2011, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kilogoogle.com>, <kilogoogle.net>, and <takeagoogle.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.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 October 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@kilogoogle.com, postmaster@kilogoogle.net, and postmaster@takeagoogle.com. Also on October 12, 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.
A timely Response was received and determined to be complete on October 20, 2011.
On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complaint, as amended, asserts that Google is the owner of a very well known trademark, GOOGLE, which is allegedly one of the “top ten Best Global Brands.” Complainant alleges that Respondent’s registration of the domain names <kilogoogle.com>, <takeagoogle.com>, and <kilogoogle.net> violate the ICANN Rules and Policies.
First, the domain names are alleged to be “confusingly similar” to the GOOGLE mark. Complainant asserts that its use of the mark predates the registration of any of these domain names.
The names are confusing, says Complainant, when the name “fully incorporate[s] said mark,” citing prior domain name decisions. Addition of a descriptive term does not make the name less confusing.
Respondent obviously has no rights in the name for several reasons, says Complainant. The domains do not resolve and are not in use; Respondent is not known by any of these names; Respondent has received no license or other permission to use the mark.
As to bad faith, Complainant asserts that the evidence shows bad faith. First, the Google mark is very famous. Actual or constructive knowledge of such a famous mark is evidence of bad faith. The lack of use is evidence of bad faith. There has been and can be no legitimate use of the names because of the full incorporation of the mark. Finally, Complainant asserts that the act of registering multiple confusingly similar names is evidence of bad faith.
B. Respondent
Respondent filed a one page, pro se Response. He states that he is not “making money on Google’s success or neither uses any means to harm” Google. He “came with an idea of making an internet site for checking the number of Google findings for a word or phrase.” Then he determined that “kilogoogle” was a term widely used on the Internet. This led to his decision to register the domain names.
Essentially, his Response denies bad faith. It also admits that <takeagoogle.com> is a name Google might wish to use, and it states that Respondent has no objection to a transfer of that domain name.
C. Additional Submissions
Complainant timely filed an additional submission. Complainant points out that it already offers the service that Respondent wanted to develop for <kilogoogle.com> or <kilogoogle.net>. Google already offers “search results returned for any given term or phrase.” Respondent’s intended use directly competes with Google. Complainant asserts that Respondent has also admitted that the domain names and the mark are “confusingly similar.”
Complainant reasserts the Respondent has no rights in the names and has not rebutted the Complainant’s prima facie case. Complainant asserts that the intended use is identical to Google’s services and that “kilogoogle” is not a widely used term on the Internet.
As to “bad faith,” the act of using a name similar to Google to offer a service provided by Google is evidence of bad faith. Further, Respondent hopes to attract “millions of users,” all in apparent direct competition with Google. This is evidence of “bad faith,” as is the registration of a name containing the whole of a very famous mark.
Complainant has stated a prima facie case as to each of the elements which it is required to prove under the ICANN Policies and Rules. It holds a very famous mark. The Respondent’s domain names wholly incorporate the mark.
Respondent has all but admitted that the marks are “confusingly similar” to the admittedly famous mark and has essentially offered to surrender <takeagoogle.com>. The other two marks, however, also suffer from the same defect.
Complainant has asserted that the Respondent has no rights in the names, not being known by the names or having any right to use the names. Complainant has thus made a prima facie showing which Respondent has not rebutted. One element of the Complainant’s argument, which is that the domain names are inactive, is not supported by the facts, but the other facts are sufficient to show that the Respondent has no rights in the name.
Finally, Complainant has met its burden concerning bad faith, and Respondent admits that it intended to use the domain names in a way that would put Respondent into direct competition with Google. Respondent has certainly not successfully rebutted the allegations made by Google concerning bad faith.
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."
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 has established its rights in the GOOGLE mark by registering that mark with governmental trademark authorities throughout the world. Complainant submitted evidence of trademark registrations with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004), as well as the Turkish Patent Institute (“TPI”) (e.g., Reg. No. 859,851 registered April 28, 2005). The Panel finds that these registrations establish Complainant’s rights in the GOOGLE mark under Policy ¶ 4(a)(i). 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 Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Respondent’s <kilogoogle.com>, <kilogoogle.net>, and <takeagoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Each of the disputed domain names include the entire mark while adding either the generic top-level domain (“gTLD”) “.com” or “.net,” along with the generic terms “kilo” or “takea.” Complainant states that the disputed domain names all retain the same distinctive element, its GOOGLE mark. Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also 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)).
Complainant made a prima facie case, indicating that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifted to Respondent to show that it does have rights or legitimate interests. 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant showed that Respondent is not commonly known by the disputed domain names. The WHOIS information lists the registrant of the disputed domain names as “Metin Ozdemir.” Respondent has submitted no evidence to support a finding that it is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
These elements are sufficient to satisfy Complainant’s burden on the issue of rights in the name.
However, as to Complainant’s contention that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed names and that the names all resolve to inactive websites, Complainant failed to provide any evidence that shows the websites in any form. Complainant has not provided any support for its position beyond merely stating it in the Complaint.
Even had Complainant provided evidence on this issue, previous panels have determined that failing to make an active use of disputed domain names does not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use. See 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)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
So even though Complainant clearly showed that Respondent has no rights in the name, and provided evidence sufficient to meet its burden, it did not show either that Respondent has failed to make active use of the name or that lack of active use is sufficient, in and of itself, to show that Respondent has no rights in the name.
Respondent’s registration and use of multiple disputed domain names evidences a pattern of use and supports a finding of bad faith registration and use. Previous panels have determined that the registration of many domain names in one instance is sufficient to demonstrate 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 EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). Respondent’s registration of multiple disputed domain names in this one instance, supports a finding of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant contends and Respondent admits that Respondent had actual notice of Google’s rights in the disputed domain name due to the mark’s relative fame. The GOOGLE mark has garnered enough recognition and notoriety so as to make it impossible for Respondent to not be aware of Google’s rights in the mark. Complainant’s mark is so popular and well known as to give Respondent actual notice of Complainant’s rights in the GOOGLE mark, and therefore supports a finding of bad faith registration under Policy ¶ 4(a)(iii). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name” and such knowledge constituted bad faith).
The Panel finds that, due to the strength and fame of Complainant's marks, the finding above of actual notice, and Respondent's admission that he is not actively using the domain names, no possible good faith use would be possible with respect to the use of <kilogoogle.com>, <kilogoogle.net>, and <takeagoogle.com>. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Therefore, the Panel find that Complainant has suceeded in establishing bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kilogoogle.com>, <kilogoogle.net>, and <takeagoogle.com> domain names be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: November 8, 2011
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