national arbitration forum

 

DECISION

 

Google Inc. v. one to one marketing / one to one firm

Claim Number: FA1111001415180

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Kiran K. Belur of Fenwick & West, LLP, California, USA.  Respondent is one to one marketing / one to one firm (“Respondent”), Lebanon.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2011; the National Arbitration Forum received payment on November 11, 2011.

 

On November 11, 2011 and November 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 November 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@googlegulf.com, postmaster@googlebahrain.com, postmaster@googlecongo.com, postmaster@googlelibya.com, postmaster@googlesaudiarabia.com, postmaster@googleafghanistan.com, postmaster@googleyemen.com, and postmaster@googlehariri.com.  Also on November 16, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 15, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names is confusingly similar to Complainant’s GOOGLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names.

 

3.    Respondent registered and used the <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Google, Inc., is a global provider of search related services on the Internet.  Complainant owns a wide array of trademark registrations with governmental authorities across the globe. 

 

1.    United States Patent and Trademark Office (“USPTO”)

a.    Reg. No. 2,806,075 registered January 20, 2004

b.    Reg. No. 2,884,502 registered September 14, 2004

 

2.    Saudi Arabia Industrial Property Office (“SAIPO”)

a.    Reg. No. 745/52 registered September 8, 2004

b.    Reg. No. 743/50 registered September 1, 2004

 

3.    Yemen Industrial Property Office (“YIPO”)

a.    Reg. No. 32,118 registered May 8, 2006

b.    Reg. No. 27,552 registered May 5, 2006

 

Complainant uses the GOOGLE mark as its business name and as its domain name for the web-based services it offers at <google.com>.

 

Respondent, one to one marketing / one to one firm, registered the <googlelibya.com> domain name  on February 20, 2011.  The remainder of the disputed domain names were registered on February 17, 2011.  The <googlegulf.com> domain name resolves to a website offering search services that compete with Complainant’s services.  The <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names resolve to websites solely offering the domain names for sale.

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Based upon the WHOIS information, which is nearly identical for all of the disputed domain names, the Panel determines that the disputed domain names are controlled by the same entity.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established its rights in the GOOGLE mark by registering it with trademark authorities all over the world including, but not limited to, the USPTO (e.g., Reg. No. 2,806,075 registered January 20, 2004), SAIPO (e.g., Reg. No. 743/50 registered September 1, 2004), and YIPO (e.g., Reg. No. 27,552 registered May 5, 2006).  Complainant has submitted the trademark certificates for each of the registrations listed, verifying that the mark is duly registered in each jurisdiction and that it is the owner of record.  Therefore, the Panel finds that Complainant has established its rights in the GOOGLE mark under Policy ¶ 4(a)(i) by registering it with multiple trademark authorities worldwide.  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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant also asserts that Respondent’s disputed domain names are confusingly similar to its GOOGLE mark. Each disputed domain name includes the entire mark while adding its own distinct geographical identifier, “gulf,” “hariri,” “congo,” “libya,” “saudiarabia,” “yemen,” “bahrain,” or “afghanistan,” while also adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding a geographic identifier and a gTLD are not enough to sufficiently differentiate the disputed domain names from Complainant’s GOOGLE mark.  Therefore, the Panel also finds that Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also 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).    

 

The Panel finds that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Complainant has made what the Panel finds to be a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain names.  As a result of that finding, Respondent now bears the burden of proving that it has rights or legitimate interests in the disputed domain names.  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)).  Respondent has failed to file a Response in this case, allowing the Panel to assume that it lacks rights or legitimate interests in the disputed domain names.  See American 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 still examine the record thoroughly before making a determination with regard to Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the disputed domain name.  The WHOIS information for the <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, <googlelibya.com>, and <googlehariri.com> domain names is not similar to any of the disputed domain names.  Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <googlegulf.com> domain name.  Respondent’s <googlegulf.com> domain name resolves to a website offering competing search optimization services.  The website also offers the other disputed domain names for sale.  The Panel finds that the foregoing does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <googlegulf.com> domain name under Policy ¶ 4(c)(iii).  See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Lastly, Complainant alleges that Respondent does not have rights or legitimate interests in the <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names.  The disputed domain names mentioned above all resolve to websites offering the domain names for sale.  Such a use does not confer upon the registrant of a domain name rights or legitimate interests.  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).  Therefore, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.

 

The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s offer to sell the disputed domain names constitutes bad faith registration and use.   All of the disputed domain names resolve to a website which offers the disputed domain names for sale.  The Panel finds that an offer to sell a domain name without more provides affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). 

 

Complainant’s contends that Respondent’s <googlegulf.com> domain name disrupts its business, providing affirmative evidence of bad faith registration and use.  The <googlegulf.com> domain name resolves to a website offering services that directly compete with Complainant’s own search optimization services.  Previous panels have determined that offering competing services through a disputed domain name disrupts a complainant’s business.  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).  Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii)

 

Complainant also contends that Respondent registered and is using the <googlegulf.com> domain name for its own commercial gain.  The disputed domain name resolves to a website offering search engine optimization and related services in direct competition with Complainant’s own service offerings.  Respondent presumably generates revenue by collecting fees for its services.  Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googlegulf.com>, <googlebahrain.com>, <googlecongo.com>, <googlelibya.com>, <googlesaudiarabia.com>, <googleafghanistan.com>, <googleyemen.com>, and <googlehariri.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  December 20, 2011

 

 

 

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