Google Inc. v. - / SANDEEP
Claim Number: FA1110001413164
Complainant is Google Inc. (“Complainant”), represented by Kathlyn A. Querubin of Cooley LLP, California, USA. Respondent is - / SANDEEP (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwordcoupons.com>, registered with BigRock Solutions Pvt Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the National Arbitration Forum received payment on October 27, 2011.
On October 28, 2011, BigRock Solutions Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <adwordcoupons.com> domain name is registered with BigRock Solutions Pvt Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Pvt Ltd. has verified that Respondent is bound by the BigRock Solutions Pvt Ltd. 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@adwordcoupons.com. Also on November 2, 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 November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <adwordcoupons.com> domain name is confusingly similar to Complainant’s ADWORDS mark.
2. Respondent does not have any rights or legitimate interests in the <adwordcoupons.com> domain name.
3. Respondent registered and used the <adwordcoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., offers a wide array of advertising tools and services, including its ADWORDS service. The ADWORDS service was launched by Complainant in 2000 and allows advertisers to purchase a keyword that will trigger the display of advertisements when a consumer enters that keyword into Complainant’s search engine. Complainant has consistently and extensively used the ADWORDS mark since 2000. Further, Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the ADWORDS mark (Reg. No. 2,794,616 registered December 16, 2003). Complainant also owns numerous trademark registrations with governmental trademark authorities worldwide, including with the India Controller General of Patents, Designs, and Trademarks (“CGPDT”) (Reg. No. 1237957 registered September 18, 2003).
Respondent, - / SANDEEP, registered the <adwordcoupons.com> domain name on January 7, 2011. Respondent’s domain name resolves to a website that resembles Complainant’s official website while offering coupons for Complainant’s ADWORDS service without authorization to do so.
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 rights in the ADWORDS mark that it has been using in commerce since the year 2000. Under Policy ¶ 4(a)(i), a complainant may establish rights in its asserted mark through either a trademark registration with a governmental trademark authority or through the common law. 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). In the instant proceeding, Complainant has presented evidence to show that it owns numerous trademark registrations worldwide with governmental authorities for the ADWORDS mark. Such registrations include those with the USPTO (Reg. No. 2,794,616 registered December 16, 2003) and the CGPDT (Reg. No. 1,237,957 registered September 18, 2003). Therefore, the Panel finds that Complainant has established its rights in the ADWORDS mark under Policy ¶ 4(a)(i) through its trademark registrations identified above. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
The second prong of a Policy ¶ 4(a)(i) analysis deals with the identical or confusingly similar nature of the domain name to the asserted mark. Here, Complainant alleges that the <adwordcoupons.com> domain name is confusingly similar to Complainant’s ADWORDS mark. The disputed domain name contains Complainant’s mark, while removing the letter “s” and adding the generic term “coupons” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that such changes to Complainant’s mark are insufficient to prevent the domain name from being confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not hold rights or legitimate interests in the <adwordcoupons.com> domain name. he Panel finds that the Complainant has established a prima facie case under Policy ¶ 4(a)(ii), thus transferring the burden of proof to Respondent. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Because Respondent has not submitted a Response to these proceedings, the Panel may choose to accept Complainant’s arguments fully, so long as they are not clearly contradicted by the evidence on record. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). However, although no Response has been submitted, the Panel will nevertheless proceed to evaluate the evidence on record in making its determinations under Policy ¶ 4(a)(ii).
Complainant first contends that it has not authorized Respondent to register or use the disputed domain name. Complainant points to the WHOIS information for the domain name which identifies the registrant as, “- / SANDEEP.” Respondent has not come forward with any evidence that it is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the <adwordcoupons.com> domain name 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent is using the disputed domain name to intentionally mimic the look and feel of Complainant’s official <adwords.com> website, while selling unauthorized coupons for Complainant’s service. Complainant argues that such “activity does not give rise to a legitimate interest in the Domain Name.” The Panel agrees and finds that Respondent’s use of the domain name, for its own commercial gain, to sell unauthorized coupons for Complainant’s ADWORDS products 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 Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”); see also Universal Protein Supplements Corp. v. Dalech, LLC, FA 1278030 (Nat. Arb. Forum Sept. 8, 2009) (finding that Respondent’s attempt to profit by redirecting consumers to Respondent’s commercial website selling Complainant’s goods is not consistent with Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is using the domain name in question to sell coupons for Complainant’s products. Complainant has argued that such use is strictly prohibited by it, and that Respondent has never been authorized to use its mark or products in such a way. The Panel finds that Respondent’s use of the domain name in this way disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Further, the Panel presumes that Respondent is profiting from its use of the domain name through its sale of coupons for Complainant’s ADWORDS service. Complainant argues that Respondent’s domain name resolves to a website using the ADWORDS mark and logo while creating the look and feel of Complainant’s official domain name. The Panel finds that such use of the domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ADWORDS mark. 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). Here, the Panel finds that Respondent’s use of the domain name to purportedly sell coupons for Complainant’s ADWORDS service indicates that Respondent had actual knowledge of Complainant and its rights to the ADWORDS mark. As such, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that 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 <adwordcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 8, 2011
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