national arbitration forum

 

DECISION

 

Google Inc. v. Shuying Zhang

Claim Number: FA1111001416054

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA.  Respondent is Shuying Zhang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googler.co>, registered with GODADDY.COM, INC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2011; the National Arbitration Forum received payment on November 17, 2011.

 

On November 17, 2011, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <googler.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  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 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@googler.co.  Also on November 18, 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 16, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <googler.co> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <googler.co> domain name.

 

3.    Respondent registered and used the <googler.co> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Google Inc., owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004) and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,224,817 registered August 16, 2006) for its GOOGLE mark.  Complainant uses its GOOGLE mark to offer search engine services. 

 

Respondent, Shuying Zhang, registered the <googler.co> domain name on July 20, 2010.  The disputed domain name resolves to the website that has pop-up windows and offers prizes in exchange for e-mail addresses.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it established rights in its GOOGLE mark under Policy ¶ 4(a)(i).  In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010), the panels found that a trademark registration with the USPTO or SAIC is sufficient to establish rights in a mark under Policy ¶ 4(a)(i).  Complainant provides evidence of its trademark registrations with the USPTO (e.g., Reg. No. 2,884,502 registered September 14, 2004) and SAIC (Reg. No. 1,224,817 registered August 16, 2006) for its GOOGLE mark.  Therefore, the Panel finds Complainant established rights in its GOOGLE mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <googler.co> domain name is confusingly similar to Complainant’s GOOGLE mark.  In Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006), and Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panels found that a disputed domain is confusingly similar to a complainant’s mark regardless of the addition of a letter to the complainant’s mark.  In World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels concluded that the addition of a country-code top-level domain (“ccTLD”) did not remove a disputed domain name from the realm of confusing similarity.  As Respondent’s <googler.co> domain name differs from Complainant’s mark by the addition of the letter “r” and the ccTLD “.co,” the Panel holds that Respondent’s <googler.co> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel deems Policy ¶ 4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <googler.co> domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel 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).  In this case, the Panel finds Complainant made a sufficient prima facie case.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel 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.  However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <googler.co> domain name.  In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels analyzed the WHOIS information, whether or not the complainant authorized the respondent’s use of the complainant’s mark, and the lack of a response to determine that a respondent was not commonly known by a disputed domain name.  In this case, the WHOIS information identifies “Shuying Zhang” as the registrant of the <googler.co> domain name.  Complainant asserts that Respondent is not authorized or licensed to use its GOOGLE mark.  Respondent did not respond to this case and, therefore, did not offer any evidence that it is commonly known by the disputed domain name.  Consequently, the Panel concludes Respondent is not commonly known by the <googler.co> domain name under Policy ¶ 4(c)(ii). 

 

Complainant claims that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <googler.co> domain name.  In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), and Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panels found that the use of a disputed domain name to offer unrelated products and services was evidence that the respondent lacked rights and legitimate interests in the disputed domain name.  In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), and Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panels determined that the use of the disputed domain name to offer pop-up advertisements unrelated to Complainant also evidenced a lack of rights and legitimate interests.  Complainant contends that Respondent’s <googler.co> domain name resolves to a website that contains pop-up advertisements for ringtones and also offers gifts in exchange for an e-mail address.  Complainant claims that both of these uses are unrelated to Complainant’s search engine business.  Thus, the Panel finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <googler.co> domain name under Policy ¶ 4(c)(iii).

 

Complainant admits that Respondent’s resolving website does contain a disclaimer that states: “This website is not sponsored by or affiliated with Google.”  In AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000), and DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000), the panels found that a disclaimer did not prevent a finding that a respondent lacks rights and legitimate interests in a disputed domain name.  Therefore, the Panel determines that Respondent’s disclaimer is insufficient to prevent the Panel’s finding that Respondent lacks rights and legitimate interests in the <googler.co> domain name under Policy ¶ 4(a)(ii).

 

The Panel deems Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and uses the <googler.co> domain name in bad faith by attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name.  In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), and Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000), the panels concluded that a respondent’s unrelated use of a disputed domain name in an attempt to profit from Internet user confusion is evidence of bad faith registration and use.  Complainant asserts that Respondent offers unrelated pop-up advertisements selling ringtones and offers gifts in exchange for Internet users’ e-mail addresses.  Complainant contends that such a use is unrelated to Complainant’s search engine services and that Respondent commercially benefits by selling ringtones and receiving e-mail addresses.  Complainant argues that confusion is created by Respondent’s use of Complainant’s mark on the resolving website and by referencing Complainant when it attempts to obtain the e-mail addresses from Internet users.  Therefore, the Panel holds that Respondent registered and uses the <googler.co> domain name in bad faith under Policy ¶ 4(b)(iv). 

 

As noted above under Policy ¶ 4(a)(ii), the resolving website contains a disclaimer.  In Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007), and Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006), the panels found that a disclaimer does not prevent a panel from finding bad faith registration and use.  Thus, the Panel concludes that Respondent registered and uses the <googler.co> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 

 

The Panel deems Policy ¶ 4(a)(iii) satisfied.

 

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 <googler.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 29, 2011

 

 

 

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