national arbitration forum

 

DECISION

 

Google Inc. v. Modern Empire Internet Ltd.

Claim Number: FA1202001432316

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA.  Respondent is Modern Empire Internet Ltd. (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googke.com>,<googge.com>,<googloo.com> , and <gogloo.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.

 

On March 01, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <googke.com>, <googge.com>, <googloo.com> and <gogloo.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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@googke.com, postmaster@googge.com, postmaster@googloo.com, postmaster@gogloo.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 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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

 

Complainant, formed in 1997, and doing business continuously since that time under the GOOGLE service mark, is one of the best recognized and widely used Internet search services in the world, with its primary website located at www.google.com.

 

Complainant owns registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for its GOOGLE service mark (including Reg. No. 2,806,075, filed September 16, 1999, and registered January 20, 2004).

 

Registrant registered the disputed domain names between June 23, 2001, and

September 1, 2002.

 

Respondent’s domain names are confusingly similar to Complainant’s GOOGLE service mark.

 

Complainant has not authorized Respondent to register or use any of the dis-puted domain names.

Respondent is not commonly known by any of the disputed domain names.

 

Respondent has no rights to or legitimate interest in any of the domain names.

 

Respondent is engaging in a phishing scheme by which the disputed domain names resolve to a website that copies the overall look and feel of Complainant’s official website in an attempt to obtain confidential personal information from unsuspecting Internet users.

 

Respondent had actual knowledge of Complainant’s GOOGLE mark when the disputed domain names were registered.

 

Respondent both registered and uses the disputed domain names in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain names; and

(3)  the same domains name were registered and are being used by Respondent in bad faith.

 

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."

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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”

 

 

Identical and/or Confusingly Similar

 

Complainant has rights in its GOOGLE mark under Policy ¶ 4(a)(i)by reason of its registration of the mark with a national trademark authority, the USPTO.   See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations with national trademark authorities);  see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).

 

Respondent’s domain names <googke.com>, <googge.com>, <googloo.com>, and <gogloo.com> are confusingly similar to Complainant’s GOOGLE service mark because each domain name contains only a minor misspelling of the mark. These alterations of the mark, made in forming the domain names, are not sufficient to avoid a finding of confusing similarity under the standards of Policy ¶ 4(a)(i).  See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complain-ant's BELKIN mark because the name merely replaced the letter “i” in the com-plainant's mark with the letter “e”);  see also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002):

 

The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.

 

Moreover, the addition of the generic top-level domain (”gTLD”) “.com” to Complainant’s mark in creating each of the contested domain names has no distinguishing effect because all domain names require a gTLD.  See, for example, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

It is of no consequence to this discussion that Complainant’s registration of its GOOGLE mark became effective in 2004, after the registration of the disputed domain names in 2001-02, because Complainant’s rights in its registered mark date from the mark’s registration application filing date in 1999, which predates the registration of all of the domain names.

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Comment-aries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in any of the contested domain names.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Respondent is not authorized or licensed to use Complainant’s GOOGLE mark.  Moreover, the pertinent WHOIS information for each of the contested domain names identifies the registrant only as “Modern Empire Internet Ltd.,” which does not resemble the disputed domain names.  On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in any of them under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that re-spondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legiti-mate interests in those domain names under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indica-tion that that respondent was commonly known by the disputed domain names, and where a complainant alleged that it had not authorized that respondent to register a domain name containing its mark).

 

We next observe that Complainant asserts, without objection from Respondent, that the disputed domain names resolve to websites which mimic Complainant and prompt Internet users to provide personal information.  In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this use of the domain names, which is neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy 4(c)(iii).  See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii));  see also Google Inc. v. Domain Administrator, FA 1422926 (Nat. Arb. Forum Feb. 10, 2012) (finding that a re-spondent’s use of domain names that are “confusingly similar to Complainant’s mark to redirect Internet users to sites offering prizes for taking a short survey and providing personal and financial information such as cell phone numbers and e-mail addresses as well as signing up for text messaging plans with a monthly fee” does not fall within the parameters of Policy ¶¶4(c)(i) or (iii)).

 

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

 

Registration and Use in Bad Faith

 

It is evident from the record in this proceeding that Respondent is a serial cyber-squatter, having been a party to more than 10 other domain name disputes in each of which it was found to have registered and used in bad faith domain names derived from the marks of others. See, for example, MGM Resorts Int. v. Modern Empire Internet Ltd., FA 1422265 (Nat. Arb. Forum Jan. 28, 2012); see also Wal-Mart Stores, Inc. V. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum March 16, 2006);  further see Swarovski A.G v. Modern Empire Internet Ltd, D2006-0148 (WIPO Mar. 27, 2006).  This is evidence that Respondent registered and uses the domain names here in issue in bad faith within the contemplation of Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).

 

It is also evident from the record that Respondent’s registration and use of the disputed domain names constitutes typo-squatting, the deliberate misspelling of the mark of another in forming a domain name in order to attract Internet users who inadvertently enter a misspelled mark in an Internet search engine when seeking to do business with the mark holder.  Typo-squatting is itself evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(a)(iii).  See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding that a respondent regis-tered and used a domain name in bad faith where that respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsor-ship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”);  see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005):

 

Respondent's registration of the domain names in dispute con-stitutes bad faith because the domain names are merely typo squatted versions of the [complainant’s] … mark.

 

Finally under this head of the Policy, the fact that the registration of Respondent’s domain names predates the effective date of the registration of Complainant’s GOOGLE mark does not foreclose a finding of bad faith registration and use of the domains in the circumstances presented here.  This is because it is apparent from the record, as is alleged without objection in the Complaint, that Complain-ant, having been formed in 1997, and doing business continuously since that time under the GOOGLE service mark, is one of the best recognized and widely used Internet search services in the world.  It is therefore plain that Respondent registered each of the contested domain names while knowing of Complainant’s existence and the prominence of its GOOGLE service mark.  This is ample to establish Respondent’s bad faith in registering and using the domains as it has.

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the domain names <googke.com>,<googge.com>, <googloo.com>, and <gogloo.com> be TRANSFERRED forthwith from Respond-ent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 20, 2012

 

 

 

 

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