Google Inc. v. Private Whois mgoogle.com
Claim Number: FA1201001422338
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, US. Respondent is Private Whois mgoogle.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mgoogle.com>, registered with Internet.bs Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2012; the National Arbitration Forum received payment on January 3, 2012.
On January 9, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <mgoogle.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs 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 January 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2012 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@mgoogle.com. Also on January 12, 2012, 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 February 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <mgoogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <mgoogle.com> domain name.
3. Respondent registered and used the <mgoogle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., provides Internet search engine services under its GOOGLE mark. Complainant holds numerous trademark registrations for its GOOGLE mark with the Bahamas Registrar General’s Department (“BRGD”) (e.g., Reg. No. 28,843 registered April 7, 2010) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered January 20, 2004).
Respondent, Private Whois mgoogle.com, registered the <mgoogle.com> domain name on February 4, 2005. The disputed domain name resolves to a website unrelated to Complainant’s business. The resolving website contains a pop-up window that states “Congratulations Google User! You are the California winner for December 22nd. Please select a prize and enter your email [sic] on the next page to claim.” After selecting “OK,” the Internet user is asked to take part in a survey in order to win the prize. When an Internet user attempts to leave the page, another pop-up window appears that says “Are you sure you want to navigate away from this page? WAIT! If you exit now, this gift will be given to the next random visitor from California and you will be unable to claim it in the future,” and a new website loads for a different service that is unrelated to Complainant’s business.
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 provides evidence of its trademark registrations with the BRGD for its GOOGLE mark (e.g., Reg. No. 28,843 registered April 7, 2010). However, as Complainant’s registration with the BRGD occurred after Respondent registered the disputed domain name, the Panel elects to use Complainant’s USPTO trademark registrations (e.g., Reg. No. 2,806,075 registered January 20, 2004) for the Panel’s Policy ¶ 4(a)(i) analysis. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels found that a complainant need not register a trademark within the country that the respondent resides or operates as long as the complainant owned a trademark with a national trademark authority. Therefore, the Panel concludes that Complainant owns rights in its GOOGLE mark under Policy ¶ 4(a)(i), based on Complainant’s trademark registrations with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <mgoogle.com> domain name only differs from Complainant’s mark by the additions of the letter “m” and the generic top-level domain (“gTLD”) “.com.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), and Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panels found that the addition of a letter failed to adequately distinguish a disputed domain name from a complainant’s mark. In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the panels concluded that the addition of a gTLD fails to remove a disputed domain name from the realm of confusing similarity because the addition of a top-level domain is required for any domain name. Based on this precedent, the Panel determines that Respondent’s <mgoogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in any of the <mgoogle.com> 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 a 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 authorized or licensed to register the disputed domain name. Respondent does not allege that it is commonly known by the <mgoogle.com> domain name because Respondent did not respond to this case. While the WHOIS information lists “Private Whois mgoogle.com” as the registrant of the disputed domain name, which appears to indicate that Respondent is commonly known by the disputed domain name, past panels required a respondent to present further evidence that it is commonly known by the domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Absent such further evidence in this case, the Panel concludes that Respondent is not commonly known by the <mgoogle.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s <mgoogle.com> domain name resolves to a survey website that is unrelated to Complainant’s business. When an Internet user enters the resolving website, a pop-up window appears telling the user: “Congratulations Google User! You are the California winner for December 22nd. Please select a prize and enter your email [sic] on the next page to claim.” After selecting “OK,” the Internet user is asked to take part in a survey in order to win the prize. When an Internet user attempts to leave the page, another pop-up window appears that says “Are you sure you want to navigate away from this page? WAIT! If you exit now, this gift will be given to the next random visitor from California and you will be unable to claim it in the future,” and a new website loads for a different service that is unrelated to Complainant’s business. In Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009), and Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010), the panels held that a respondent’s use of a disputed domain name to resolve to an unrelated survey website 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). Thus, the Panel concludes that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <mgoogle.com> domain name.
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
As noted above, Respondent’s <mgoogle.com> domain name resolves to a survey website unrelated to Complainant’s business. Complainant argues that Respondent commercially benefits from this use in some way. Complainant also alleges that Respondent displays Complainant’s GOOGLE mark throughout the resolving website, which adds to the likelihood of Internet user confusion as to Complainant’s affiliation with the disputed domain name. In Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010), and Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (Nat. Arb. Forum July 23, 2011), the panels determined that a respondent’s hosting of a survey website at a confusingly similar disputed domain name evidences a respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The Panel agrees with this precedent and holds that Respondent registered and uses the <mgoogle.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that its trademark registrations for the GOOGLE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgoogle.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 3, 2012
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