national arbitration forum

 

DECISION

 

Google Inc. v. North American Payment Systems

Claim Number: FA1210001467517

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA.  Respondent is North American Payment Systems (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <zagatcard.com> and <zagatcard.net>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 16, 2012; the National Arbitration Forum received payment October 17, 2012.

 

On October 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <zagatcard.com> and <zagatcard.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@zagatcard.com, and postmaster@zagatcard.net.  Also on October 19, 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 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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

 

  1. Complainant makes the following allegations in this proceeding:

 

    1. Complainant, Google, Inc., is a Delaware corporation that was founded in 1997.  Complainant is renowned for having developed one of the largest, most highly recognized, and widely used Internet search services in the world located at <google.com>. 
    2. In 2011, Complainant acquired Zagat Survey, LLC, which has now become a wholly owned subsidiary of Complainant’s business.  As part of the acquisition Zagat Survey, LLC assigned its trademark registrations to Complainant.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the ZAGAT (Reg. No. 1,972,492 filed Dec. 14, 1994) and ZAGAT.COM marks (Reg. No. 2,584,304 filed Nov. 3, 1999).  See Complainant’s Exhibit 8A.
    3. Respondent’s <zagatcard.com> and <zagatcard.net> domain names are confusingly similar to Complainant’s ZAGAT and ZAGAT.COM marks. 
    4. Respondent is not using the disputed domain names in conjunction with an active website.
    5. Respondent is not commonly known by the disputed domain names or any name containing the ZAGAT mark, and Respondent has not been authorized or licensed to use the ZAGAT mark in any way. 
    6. Respondent’s failure to make an active use of the disputed domain names in nearly 10 years is evidence of Respondent’s bad faith. 
    7. The fame and unique qualities of the ZAGAT mark make it extremely unlikely that Respondent registered the disputed domain name without some knowledge of Complainant’s rights in the mark. 

 

  1. Respondent did not submit a Response in these proceedings. 

 

The Panel notes; however, that Respondent registered the <zagatcard.com> and <zagatcard.net> domain names July 9, 2003.

 

FINDINGS

 

The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has shown protected rights.

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names.

 

The Panel finds that Respondent registered and passively held the disputed domain names 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 Complainant to 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 to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical to and/or Confusingly Similar

 

Complainant claims that in 2011, Complainant acquired Zagat Survey, LLC, which has now become a wholly owned subsidiary of Complainant’s business.  As part of the acquisition, Complainant asserts that Zagat Survey, LLC assigned its trademark registrations to Complainant.  Complainant claims that it now owns several trademark registrations with the USPTO for the ZAGAT (Reg. No. 1,972,492 filed Dec. 14, 1994) and ZAGAT.COM marks (Reg. No. 2,584,304 filed Nov. 3, 1999).  See Complainant’s Exhibit 8A.  The Panel notes that Complainant has not supplied the Panel with actual trademark certificates or online printouts or the assignment of record, but produced a spreadsheet printout listing the purported marks owned by Complainant.  The Panel notes as well that the spreadsheet provided by Complainant does not include the actual registration date of the trademark registrations, but simply the filing date for those marks.  Nonetheless, the Panel finds that the evidence that Complainant is sufficient evidence under the facts of the case to show established rights in Complainant to the ZAGAT and ZAGAT.COM marks under Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). These rights, moreover, date back to long before Respondent’s registration.

 

Further, Complainant argues that Respondent’s <zagatcard.com> and <zagatcard.net> domain names are confusingly similar to Complainant’s ZAGAT and ZAGAT.COM marks.  Complainant contends that Respondent’s addition of the descriptive term “card” to the ZAGAT mark does not render the domain names distinct from the mark.  The Panel also notes that the disputed domain names add the generic top-level domain (“gTLD”) “.com” or “.net.”  The Panel finds that the additions noted to Complainant’s mark do not distinguish the disputed domain names from the realm of confusing similarity.  See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Therefore, the Panel finds that Respondent’s <zagatcard.com> and <zagatcard.net> domain names are confusingly similar to Complainant’s ZAGAT and ZAGAT.COM marks under Policy ¶ 4(a)(i).

 

Respondent made no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain names or any name containing the ZAGAT mark, and that Complainant has not authorized or licensed Respondent to use the ZAGAT mark in any way.  The Panel notes that the registrant information for the disputed domain names identifies “North American Payment Systems” as the registrant, and Respondent has not come forward with any evidence to refute Complainant’s claims.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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).

 

Further, Complainant argues that Respondent is not using the disputed domain names in conjunction with an active website.  As proof of its claims, Complainant supplied the Panel with two screenshots that Complainant argues show that the disputed domain names do not connect with an active website.  See Complainant’s Exhibit 10.  The Panel finds that Respondent’s failure to make an active use precludes a finding that Respondent is using the disputed domain names for 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Respondent made no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant does not allege that Respondent violated one of the Policy ¶ 4(b) bad faith factors.  However, the Panel evaluates Respondent’s bad faith using the totality of the circumstances, as have prior UDRP panels.  The Policy ¶ 4(b) factors are not meant to be exclusive, but are rather illustrative.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Complainant asserts that Respondent’s failure to make an active use of the disputed domain names in nearly 10 years is evidence of Respondent’s bad faith.  As noted above, Complainant submitted screenshots that it argues depict and support its assertions that the disputed domain names do not resolve to active websites.  The Panel finds that Respondent’s failure to make an active use of the disputed domain names is evidence of passive holding that supports findings of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).

 

Lastly, Complainant argues that the fame and unique qualities of the ZAGAT mark make it extremely unlikely that Respondent registered the disputed domain name without some knowledge of Complainant’s rights in the mark.  Complainant also notes the longstanding use of the ZAGAT mark as well as the popularity of the mark as evidence that Respondent had at least constructive knowledge of the mark and Complainant’s rights therein.  While constructive notice is not sufficient to support a bad faith finding, the Panel finds that Respondent had actual knowledge of the ZAGAT mark and Complainant's rights in the mark.  The Panel finds 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).

 

Respondent made no contentions relative to Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  

 

Accordingly, it is Ordered that the <zagatcard.com> and <zagatcard.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: December 4, 2012.  

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page