Google Inc. v. tan dan a/k/a domain admin
Claim Number: FA1201001424622
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is tan dan a/k/a domain admin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlepakistan.com>, registered with eNom, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 13, 2012.
On January 16, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlepakistan.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@googlepakistan.com. Also on January 16, 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 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <googlepakistan.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlepakistan.com> domain name.
3. Respondent registered and used the <googlepakistan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is an Internet search engine that maintains a large collection of searchable documents, allowing Internet users to find a variety of content in different languages. Google owns the trademark registration for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”), as well as with foreign agencies such as the Intellectual Property Organization of Pakistan (“IPOP”), China’s State Administration for Industry and Commerce (“SAIC”), the Bahamas Registrar General’s Department (“BRGD”), and the United Republic of Tanzania’s Business Registrations and Licensing Agency (“BRLA”), among others.
USPTO
Reg. No. 2,806,075 registered January 20, 2004;
Reg. No. 2,884,502 registered September 14, 2004;
Reg. No. 2,954,071 registered May 24, 2005;
Reg. No. 3,140,793 registered September 12, 2006; and
Reg. No. 3,570,103 registered February 3, 2009.
IPOP
Reg. No. 188,974 registered October 2, 2003;
Reg. No. 211,111 registered June 30, 2005;
Reg. No. 211,116 registered June 30, 2005;
Reg. No. 226,403 registered August 25, 2006; and
Reg. No. 226,404 registered August 25, 2006.
SAIC
Reg. No. 01,224,817 registered August 16, 2006
BRGD
Reg. No. 28,842 registered September 28, 2005.
BRLA
Reg. No. 31,190 registered January 13, 2006; and
Reg. No. 31,191 registered January 13, 2006.
Respondent, tan dan a/k/a domain admin, registered the <googlepakistan.com> domain name with eNom, Inc. on March 5, 2009. The disputed domain name resolves to a variety of websites with content unrelated to Complainant.
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 owns multiple trademark registrations with the USPTO, IPOP, SAIC, BRGD, and the BRLA, among others.
USPTO
Reg. No. 2,806,075 registered January 20, 2004;
Reg. No. 2,884,502 registered September 14, 2004;
Reg. No. 2,954,071 registered May 24, 2005;
Reg. No. 3,140,793 registered September 12, 2006; and
Reg. No. 3,570,103 registered February 3, 2009.
IPOP
Reg. No. 188,974 registered October 2, 2003;
Reg. No. 211,111 registered June 30, 2005;
Reg. No. 211,116 registered June 30, 2005;
Reg. No. 226,403 registered August 25, 2006; and
Reg. No. 226,404 registered August 25, 2006.
SAIC
Reg. No. 01,224,817 registered August 16, 2006
BRGD
Reg. No. 28,842 registered September 28, 2005.
BRLA
Reg. No. 31,190 registered January 13, 2006; and
Reg. No. 31,191 registered January 13, 2006.
The Panel finds that, by registering trademarks in domestic and foreign trademark agencies, Complainant has established rights in the GOOGLE mark under Policy ¶ 4(a)(i). 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)); see also Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant argues that the disputed domain name <googlepakistan.com> is confusingly similar to its GOOGLE mark. Complainant alleges that adding the geographic term “pakistan” to the mark in its entirety, as well as adding the generic top-level domain (“gTLD”) “.com,” does not effectively set apart the disputed domain name from the mark. The Panel concludes that these changes render the domain name 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel determines that the <googlepakistan.com> domain name is confusingly similar to Complainant’s GOOGLE mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent does not possess any rights or legitimate interests in the <googlepakistan.com> domain name. Policy ¶ 4(a)(ii) mandates that Complainant make a prima facie showing supporting the allegations. When Complainant fulfills this obligation, the burden then shifts to Respondent to establish that it does have rights or legitimate interests in the domain name. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel determines that Complainant has successfully established a prima facie case. As a result of Respondent’s lack of reply to these proceedings, the Panel may deduce that Respondent does not possess any rights or legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Nonetheless, the Panel will inspect the evidence to make a determination as to whether or not 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 <googlepakistan.com> domain name, nor has Complainant authorized Respondent to use its GOOGLE mark in any way. The WHOIS information lists Respondent as “tan dan a/k/a domain admin,” which does not give any indication that Respondent is known by the disputed domain name. The Panel determines that, absent any evidence to support a conclusion that Respondent is commonly known by <googlepakistan.com>, Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See 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.”); see also Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark).
Complainant argues that Respondent is not utilizing the disputed domain name in a manner constituting a bona fide offering of goods and services and, further, that Respondent is not making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). The <googlepakistan.com> domain name resolves to a variety of websites that appear to change from time to time, which include an online survey, a business listing search engine, a credit screening service, and an online music store. Complainant alleges that Respondent collects referral fees for each misdirected Internet user, which does not amount to a bona fide offering of goods or services. Further, Complainant alleges that, by diverting consumers seeking Complainant’s website to unrelated websites, Respondent takes advantage of the fame and prominence that the GOOGLE mark has built worldwide, which does not constitute a legitimate noncommercial or fair use of the mark. The Panel determines that Respondent’s use of the disputed domain name fails to satisfy the expectation that Respondent’s use of the domain name is connected to a bona fide offering of goods and services under Policy ¶ 4(c)(i) and that such use does not amount to a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name to purposely misdirect Internet consumers to the corresponding website for commercial profit provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant alleges that the <googlepakistan.com> domain name furthers confusion about the affiliation between Complainant’s business and Respondent’s relationship to Complainant and, as a result of the confusion, Respondent makes a profit from the Internet traffic coming across its websites. Further, Complainant alleges that Respondent capitalizes on the goodwill connected with Complainant’s GOOGLE mark to attract misdirected consumers to its website. The Panel finds that Respondent’s use of the domain name to attract and confuse Internet users, and commercially benefit there from, is proof of bad faith registration and use under Policy ¶ 4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant argues that, because of the fame and reputation of Complainant’s GOOGLE mark, it is impossible that Respondent could have registered the <googlepakistan.com> domain name without having actual and constructive knowledge of the mark, which is evidence that Respondent registered and is using the disputed domain name in bad faith. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark before registering the disputed domain name and finds that actual knowledge is sufficient to demonstrate bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Policy ¶ 4(a)(iii) is 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 <googlepakistan.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 27, 2012
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