Google Inc. v. Ni Hao / Two Stooges LLC
Claim Number: FA1206001449765
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Ni Hao / Two Stooges LLC (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com>, registered with moniker Online Services, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 21, 2012.
On June 22, 2012, moniker Online Services, Inc confirmed by e-mail to the National Arbitration Forum that the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names are registered with moniker Online Services, Inc and that Respondent is the current registrant of the names. Moniker Online Services, Inc has verified that Respondent is bound by the moniker Online Services, 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 June 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@googlscholar.com, postmaster@gooleimage.com, postmaster@gooleimages.com, postmaster@goolescholar.com, postmaster@goooglr.com, and postmaster@deletedyoutube.com. Also on June 28, 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 July 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names are confusingly similar to Complainant’s GOOGLE or YOUTUBE marks.
2. Respondent does not have any rights or legitimate interests in the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names.
3. Respondent registered and used the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations for its famous GOOGLE mark throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004) and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,415,705 registered September 28, 2000).
Complainant also has rights in its famous YOUTUBE mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,525,802 registered January 30, 2006) and with the SAIC (Reg. No. 897,049 registered March 1, 2006).
Respondent registered the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names from April through May of 2005, and the <deletedyoutube.com> domain name on March 13, 2007. The <googlscholar.com> domain name resolves to a website containing sponsored listings that generate revenue for Respondent when Internet users select sponsored links. The <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names resolve to websites that contain a search engine, as well as sponsored listings that endorse GOOGLE-related products and services. The <deletedyoutube.com> domain name does not resolve to an active website.
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 owns trademark rights in its GOOGLE and YOUTUBE marks through its trademark registrations with the USPTO, as well as several other international agencies. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel held that the complainant secured rights in its GOOGLE mark by holding numerous trademark registrations around the world. See also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, and <goolescholar.com> domain names are confusingly similar to Complainant’s GOOGLE mark. These disputed domain names all delete a letter GOOGLE mark, creating an unrecognizable term and likely taking advantage of Internet user typing errors. Each disputed domain name also includes a descriptive term suggestive of one of the features offered by Complainant, and adds a generic top-level domain (“gTLD”) “.com.” The Panel finds that these changes do not distinguish the disputed domain names from Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); 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”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Respondent’s <deletedyoutube.com> domain name includes the descriptive term “deleted” to Complainant’s mark, which refers to the ability to delete content from the YouTube service. The Panel finds that the <deletedyoutube.com> domain name is confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i), despite the addition of a gTLD and a descriptive term. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent lacks rights or legitimate interests in the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names. Complainant claims that Respondent is not commonly known by any of the disputed domain names and points out that the WHOIS information in connection with each of the domain names does not indicate that Respondent is known by any of the domain names. The Panel notes that the WHOIS information for each of the disputed domain names identifies “Ni Hao / Two Stooges LLC” as the registrant. Complainant also alleges that Respondent has no authorization to use either the GOOGLE or the YOUTUBE marks in any way. The Panel thus finds that the WHOIS information does not support a finding that Respondent is commonly known by the disputed domain names and, without consent from Complainant to use its marks, Respondent cannot claim rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as < compaqspares.com> pursuant to Policy 4(c)(ii).”).
Complainant contends that the <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names resolve to websites that have been “monetized” with click-through advertisements, which Complainant alleges is evidence that Respondent has no rights or legitimate interests in the domain names. Further, Complainant argues that the aforementioned disputed domain names divert Internet users to a search engine website that competes with Complainant. In Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002), the panel concluded that the respondent’s use of a domain name to establish a “pay-per-click” search engine was not a bona fide offering of goods or services. In Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel stated that the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain names diverted Internet traffic to a website offering competing services to those of the complainant under its mark. The Panel therefore finds that Respondent’s use of the <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names to provide competing services and click-through advertisements 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(a)(ii).
Complainant alleges that the <googlscholar.com> domain name resolves to a website that contains monetized click-through ads and sponsored listings. The hyperlinks displayed at the resolving website appear to be unrelated to Complainant’s business. The panel in Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), held that the respondent’s diversionary use of the complainant’s mark to mislead Internet users to its resolving website, which contained unrelated hyperlinks, did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that, by posting unrelated hyperlinks at the resolving website, Respondent is not using the <googlscholar.com> domain name for 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).
Complainant asserts that Respondent’s use of the <deletedyoutube.com> domain name to maintain an inactive page is sufficient to demonstrate that Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) of the <deletedyoutube.com> domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)).
Complainant further argues that Respondent’s <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names are examples of typosquatting, which takes advantage of common typing errors of Internet users. The Panel notes that the <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, and <goolescholar.com> domain names cannot be considered typosquatting because they include an additional word beyond only Complainant’s mark. The panel in LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), held that the disputed domain names were international misspellings of the Complainant’s mark, which constituted typosquatting and demonstrated Respondent’ lack of rights or legitimate interests in the disputed domain name. However, the <goooglr.com> domain name capitalizes on Internet user typing errors, and this typosquatting is additional evidence of Respondent’s lack of rights or legitimate interests.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that the domain names all incorporate various versions of Complainant’s GOOGLE or YOUTUBE marks and finds that, by holding registrations for numerous domain names that incorporate Complainant’s GOOGLE and YOUTUBE marks, Respondent registered and uses the disputed domain names in bad faith for the purposes of Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Respondent registered and uses the <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names in bad faith by using them to generate revenue through “click-through” advertisements and a search engine that competes services with Complainant. The panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), found that the respondent registered and used the disputed domain name in bad faith by offering services similar to complainant’s services. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) stated that the respondent used the disputed domain name to feature competing and non-competing links at the resolving website, from which the respondent likely received referral fees, and concluded that the respondent registered and used the domain name in bad faith. Thus, the Panel finds that, by offering hyperlinks and services at the resolving websites in competition with Complainant’s business in order to generate a profit, Respondent registered and uses the <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, and <goooglr.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent similarly uses the <googlscholar.com> domain name to display sponsored listings and no doubt generates revenue by hosting the links. The Panel finds that Respondent’s use of the <googlscholar.com> domain name to feature and profit from hyperlinks to businesses unrelated to Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
The Panel finds that, by maintaining an inactive website at the <deletedyoutube.com> domain name, Respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Finally, Respondent’s typosquatting of the <goooglr.com> domain name takes advantage of Internet users’ common spelling errors, which further demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The panel in Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005), determined that the respondent’s registration of the domain names at issue amounts to bad faith because they are typosquatted versions of the complainant’s mark.
The Panel finds that Complainant has 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 <googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 2, 2012
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