Google Inc. v. SMVS CONSULTANCY PRIVATE LIMITED
Claim Number: FA1203001432489
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is SMVS CONSULTANCY PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googde.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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 March 1, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 3, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <googde.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@googde.com. Also on March 8, 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 10, 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:
Respondent’s <googde.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GOOGLE mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1997, the GOOGLE search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant’s primary website is located at <google.com>, and Complainant owns and operates hundreds of additional GOOGLE- formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE Mark. The GOOGLE search engine maintains one of the world’s largest collections of searchable documents. Complainant owns many registrations for the GOOGLE mark, including USPTO registration 2,806,075 registered January 20, 2004 as well as a myriad of international registrations. Respondent registered the domain name at issue on October 27, 2004. Complainant has not licensed or otherwise authorized Respondent to use any form of the GOOGLE mark and Respondent is not commonly known by the <googde.com> domain name at issue. The domain name resolves to an inactive webpage. Screenshots available from www.archive.org reveal that the domain name at issue previously resolved to a website containing sponsored listings and links, including links to search engines competitive with Complainant. It appears that Respondent generated revenue when users seeking Google’s search engine services arrived at Respondent’s website instead and selected the sponsored links.
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 and has registered the GOOGLE mark (e.g., Reg. No. 2,806,075 registered January 20, 2004) multiple times with the USPTO. Additionally, Complainant has multiple registrations for the GOOGLE mark (e.g., Reg. No. 845,041 registered November 4, 2003) with the CGPDT in India where Respondent is apparently residing. The registration of a mark with a federal trademark authority is sufficient evidence of rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, Complainant has rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <googde.com> domain name is confusingly similar to the GOOGLE mark. Respondent merely changed one letter in the GOOGLE mark and added a generic top-level domain (“gTLD”) to create the disputed domain name. Respondent’s replacement of the letter “l” with the letter “d” in the GOOGLE mark fails to make the <googde.com> domain name distinct from the GOOGLE mark. 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) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent’s addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) determination. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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.”). Therefore, Respondent’s <googde.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
Respondent is not commonly known by the disputed domain name. Respondent has not been licensed or otherwise authorized by Complainant to use the GOOGLE mark. Additionally, the WHOIS record for the <googde.com> domain name lists “SMVS CONSULTANCY PRIVATE LIMITED” as the domain name registrant. Therefore, Respondent is not commonly known by the <googde.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s previous use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <googde.com> domain name previously resolved to a website which displayed links to goods and services which were unrelated or competing with those that Complainant provides under the GOOGLE mark. The display of links, competing or otherwise, on a website associated with a disputed domain name has been found to be a use which does not confer rights in the disputed domain name to the registrant. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent’s previous use of the <googde.com> domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Further, Respondent’s current use of the <googde.com> domain name is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). The <googde.com> domain name currently resolves to an inactive website. A respondent does not have rights or legitimate interests in a disputed domain name because of the non-use of a disputed domain name by the respondent. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, Respondent’s non-use of the <googde.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent intentionally created confusion as to the source of the <googde.com> domain name and then profited from the mistakes Internet users made with regard to this confusion. Respondent’s <googde.com> domain name is confusingly similar to its GOOGLE mark and some of the content displayed on the <googde.com> domain name competed with the goods or services that Complainant offers in connection with the GOOGLE mark. This is done through the display of links to these competing and non-competing goods and services, for which Complainant alleges Respondent is compensated. Respondent is compensated for the display of these links. Accordingly, Respondent registered and previously used the <googde.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by causing confusion as to the source of the <googde.com> domain name from which Respondent could profit. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Further, Respondent’s current use of the disputed domain name also demonstrates bad faith. The <googde.com> domain name currently resolves to an inactive website. The non-use of a disputed domain name is evidence of bad faith. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Therefore, Respondent’s inactive holding of the <googde.com> domain name demonstrates bad faith under Policy ¶ 4(a)(iii). Respondent’s bad faith is additionally shown by the fact that the <googde.com> domain name is simply a typosquatted version of Complainant’s GOOGLE mark. Respondent simply misspelled the mark by one letter in the <googde.com> domain name. The Panels in Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), held that typosquatting is evidence of bad faith. Therefore, Respondent’s registration and use of the <googde.com> domain name is a product of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googde.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 18, 2012
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