national arbitration forum

 

DECISION

 

Google Inc v. Lakshmi T

Claim Number: FA1209001463223

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA.  Respondent is Lakshmi T (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googlewebacademy.com>, registered with GoDaddy.com, LLC.

 

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 electron-ically on September 18, 2012; the National Arbitration Forum received payment on September 19, 2012.

 

On September 20, 2012, GoDaddy.com, LLC confirmed by e-mail message addressed to the National Arbitration Forum that the <googlewebacademy.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 21, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 11, 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, administra-tive, and billing contacts, and to postmaster@googlewebacademy.com.  Also on September 21, 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 Respond-ent’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 October 17, 2012, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

The GOOGLE name and trademark was created in 1997, and has since been used by Complainant to facilitate its marketing of Internet search engine services worldwide.

 

Complainant holds rights in the GOOGLE trademark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (in-cluding Reg. No. 2,884,502, registered Sept. 14, 2004).

 

In addition to its other products and services, Google offers Google Web Acad-emy, a learning program providing educational resources and certifications to students or professionals who are eager to succeed in an internet economy.

 

Respondent registered the <googlewebacademy.com> domain name on or about July 24, 2012.

 

Respondent’s domain name is confusingly similar to Complainant’s GOOGLE trademark.

 

Respondent has not been commonly known by the disputed domain name or any other name containing the GOOGLE mark. 

 

Complainant has not licensed or otherwise authorized Respondent to use the GOOGLE mark.

 

Respondent is not employing the disputed domain name to make a bona fide offering of goods or services.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

 

Respondent employs the domain name to redirect Internet users to a website that prominently displays a header and text that is intended to deceive users who are seeking Complainant’s Web Academy website. 

 

Respondent offers these users, for Respondent’s profit, educational products that purport to be legitimate GOOGLE Web Academy offerings.

 

Respondent registered and is using the disputed domain name in bad faith, in that Respondent knew of Complainant’s rights in the GOOGLE mark when it registered the domain name, and in that Respondent uses the domain name to generate revenue using pay-per-click advertising.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

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

(3)  the same domain name was registered and is 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 representa-tions 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 Verti-cal 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 reason-able 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 the GOOGLE trademark under Policy ¶ 4(a)(i) by virtue 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 UDRP complainant had established rights in the GOOGLE mark through its holding of a national trademark registration).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that of Respondent’s residence or place of business (here India).  See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant under the standards of the Policy whether a complainant has registered its trademark in the country of a respondent’s residence).

 

Turning then to the central question arising under Policy ¶ 4(a)(i), we are per-suaded from our review of the record that the <googlewebacademy.com> do-main name is confusingly similar to Complainant’s GOOGLE trademark.  The domain name incorporates Complainant’s entire mark, adding only the generic terms “web” and “academy,” which together relate to an aspect of Complainant’s business, and the generic top level domain (“gTLD”) “.com.”  See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005):

 

Therefore, the Panel concludes that the addition of a term de-scriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make 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 that 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 the contested domain name.  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 Com-plaint, 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 ex-amine 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 Respond-ent has rights to or legitimate interests in the disputed domain name 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 the disputed domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the GOOGLE mark.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Lakshmi T,” which does not resemble the domain name.  On this record we conclude that Respondent has not been commonly known by the <googlewebacademy.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the con-tested domain name within the contemplation of Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respond-ent was not commonly known by a domain name 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 had not licensed or otherwise authorized that respondent’s use of its mark in a domain name).

 

We next observe that Complainant also asserts, without objection from Respond-ent, that Respondent is not making a bona fide offering of goods or services by means of the domain name in that Respondent employs the domain name to redirect Internet users to a website that displays a header and text intended to deceive users who are seeking Complainant’s Web Academy website, and that Respondent there offers such users educational products that purport to be legitimate GOOGLE Web Academy offerings, and that Respondent employs the domain name in this manner for profit, including by carrying pay-per-click ad-vertising.  This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that a respondent’s use of a contested do-main name to sell products in competition with the business of a UDRP com-plainant did not give rise to any legitimate interest in the domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a disputed domain name which was confusingly sim-ilar to a complainant’s mark to redirect Internet users to websites unrelated to that complainant was not a bona fide use under Policy ¶ 4(c)(i)).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s use of the disputed domain name, as alleged in the Complaint, to generate revenue using pay-per-click advertising constitutes evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name which was confusingly similar to a complainant’s mark, and employed that domain name to host a website that offered commercial services similar to those offered by a complainant under its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that a respondent took advantage of the confusing similarity between its domain name and a complainant’s mark by using the domain name to maintain a website with links to third-party websites unre-lated to the business of that complainant, and that such use for commercial gain demonstrated bad faith registration and use under Policy ¶ 4(b)(iv)).

 

Further, we are persuaded from the evidence that Respondent knew of Com-plainant’s rights in the GOOGLE mark when it registered the contested domain name.  This is further proof that Respondent registered the domain name in bad faith.  See, for example, Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there were reasonable grounds to conclude that a UDRP respondent had actual notice of a complainant's rights in its mark at the time a confusingly similar domain name was registered, so that the domain name registration was in bad faith).

 

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 <googlewebacademy.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  October 31, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page