Google Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1210001466715
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmogle.com>, registered with PDR 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 11, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <gmogle.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR 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 October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@gmogle.com. Also on October 15, 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 November 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Respondent is not commonly known by the disputed domain name per the WHOIS information, and Complainant has not authorized or licensed Respondent to use the GOOGLE mark.
ii. Respondent is using the disputed domain name to resolve to a website featuring monetized click-through advertisements for GOOGLE products and services, as well as a search engine that brings Internet users to sponsored link pages based upon the search term entered.
iii. The <gmogle.com> domain name is an example of typosquatting, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name.
i. Respondent’s use of the disputed domain name to offer competing search engine services disrupts Complainant’s business in bad faith.
ii. Respondent is using the disputed domain name to collect click-through fees from the websites and businesses advertised through the resolving website.
iii. Respondent had knowledge of Complainant’s rights in the GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GOOGLE mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gmogle.com> domain name, and that Respondent registered and uses the domain name 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 contends that the GOOGLE name and mark were created in 1997, and since that time the GOOGLE search engine has become one the largest, most highly recognized, and widely used Internet search services in the world. Complainant notes that it owns multiple trademark registrations for the GOOGLE mark with multiple trademark authorities worldwide, specifically, the USPTO (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004) and the SVGCIPO (e.g., Reg. No. 100/2006 registered May 3, 2007). Complainant’s trademark registrations with multiple national trademark authorities is sufficient for it to establish rights in the GOOGLE mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant also argues that Respondent’s <gmogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name replaces a letter “o” from its mark with the letter “m,” something which Complainant believes takes advantage of misspellings by Internet users. Further, the domain name also contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <gmogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain name per the WHOIS information, and Complainant has not authorized or licensed Respondent to use the GOOGLE mark. The WHOIS information in the record indicates that “Private Registrations Aktien Gesellschaft / Domain Admin” is the registrant of the disputed domain name. Thus, the Panel finds that as such, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that Respondent is using the disputed domain name to resolve to a website featuring monetized click-through advertisements for GOOGLE products and services, as well as a search engine that brings Internet users to sponsored link pages based upon the search term entered. Complainant notes that the advertisements and click-through links are for Complainant’s GOOGLE products and services. Complainant also contends that Respondent’s inclusion of a search feature competes with Complainant’s own offerings of search services. The Panel finds that Respondent’s competing use of the disputed domain name is not 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Further, Complainant argues that the <gmogle.com> domain name is an example of typosquatting, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. Because the Panel agrees with Complainant, the Panel finds that Respondent’s typosquatting is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant also argues that Respondent’s typosquatting behavior is also evidence of its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). As noted by Complainant, and above, the <gmogle.com> domain name merely replaces the letter “o” of the GOOGLE mark with the letter “m.” The Panel finds that Respondent’s domain name is a typosquatted version of Complainant’s mark, and that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Lastly, Complainant argues that Respondent had knowledge of Complainant’s rights in the GOOGLE mark. Complainant points to the fame of the GOOGLE mark, the multiple registrations that it owns for the mark, and Respondent’s misspelling of the mark to show that Respondent had knowledge of the GOOGLE mark and Complainant’s rights therein prior to registering the disputed domain name. Due to the fame of Complainant's mark, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds 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 <gmogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 28, 2012
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