Google Inc. v. Compania Morales BV / Felipe Morales
Claim Number: FA1202001431177
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Compania Morales BV / Felipe Morales (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gnogle.com>, registered with Power Brand Center Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 24, 2012.
On March 1, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <gnogle.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center 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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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@gnogle.com. Also on March 2, 2012, 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 April 3, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the GOOGLE mark which it uses in connection with Internet search capabilities.
Complainant has registrations for the GOOGLE mark through the United States Patent and Trademark Office.
Respondent registered the <gnogle.com> domain name on September 7, 2005.
The <gnogle.com> domain name is confusingly similar to Complainant’s mark.
Respondent is not commonly known by the <gnogle.com> domain name.
The domain name resolves to a website which features a search engine and links to Complainant’s products and services as well as other competing links.
Respondent registered and is using the domain name to cause confusion as to the source or affiliation of the domain name and to take commercial advantage of internet users’ confusion.
Respondent has engaged in typosquatting.
Respondent had constructive and/or actual knowledge of Complainant’s mark prior to its registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights to the GOOGLE mark.
2. The disputed domain name is confusingly similar to Complainant’s mark.
3. The disputed domain name was registered and used in bad faith.
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."
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.
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.”).
Complainant has rights in the GOOGLE mark. Complaint has registrations through the USPTO for the GOOGLE mark. Registration of the mark with a trademark authority is sufficient evidence of rights in that mark. See Metro. Line Ins. Co. v. Bonds, FA873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates.
Complainant contends that the <gnogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent simply misspelled Complainant’s mark and added the generic top-level domain (“gTLD”) “.com” to it to create the domain name. The misspelling of a mark by one letter does not negate a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001). The <gnoogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name, thus the burden shifts to Respondent to show that it has such rights. Complainant contends that Respondent is not commonly known by the <gnogle.com> domain name. Complainant provides that the WHOIS record lists “Compania Morales BV / Felipe Morales” as the domain name registrant. Complainant states Respondent is not licensed or otherwise authorized to use the GOOGLE mark. Under these facts Policy ¶ 4(c)(ii) does not apply. See M. Shanken Commc’n v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).
The disputed domain name resolves to a website which operates an Internet search engine and displays links to Complainant and Complainant’s competitors. The operation of a competing website and the display of links to the complainant and its competitors is not a protected use of a disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006). This use of the disputed domain name does not constitute 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).
Complainant contends that Respondent registered and is using the <gnogle.com> domain name in bad faith. Complainant contends that Respondent is attempting to cause confusion as to the source of the disputed domain name so that it may take commercial advantage of Internet user’s mistakes and confusion. The domain name resolves to a website with a competing Internet search engine which also displays links to Complainant’s products and services, as well as other competing links. Complainant asserts that the confusing similarity of the disputed domain name, as well as the links to Complainant’s goods and services, were included to cause Internet users confusion as to Complainant’s affiliation, or lack thereof, with the <gnogle.com> domain name. The Panel infers that Respondent is commercially benefiting from the registration and use of the domain name. The Panel finds that Respondent acted in bad faith by registering and using the domain name to take commercial advantage of Internet user’s mistakes as to the source of the disputed domain name based on confusion created by Respondent. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to other domain names.).
Complainant contends that Respondent’s bad faith is demonstrated by Respondent’s typosquatting. The domain name is Complainant’s mark misspelled by one letter. This circumstance, along with the fame and strength of Complainant’s mark, permits the Panel to find that Respondent has engaged in typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gnogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 13, 2012
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