Google Inc. v. Ibrahim Steinberg
Claim Number: FA1211001472098
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is Ibrahim Steinberg (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlemap.com>, registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC DBA DOMAINCA.COM.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 19, 2012; the National Arbitration Forum received payment November 20, 2012.
On November 19, 2012, KOREA INFORMATION CERTIFICATE AUTHORITY INC DBA DOMAINCA.COM confirmed by e-mail to the National Arbitration Forum that the <googlemap.com> domain name is registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC DBA DOMAINCA.COM and that Respondent is the current registrant of the name. KOREA INFORMATION CERTIFICATE AUTHORITY INC DBA DOMAINCA.COM verified that Respondent is bound by the KOREA INFORMATION CERTIFICATE AUTHORITY INC DBA DOMAINCA.COM 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 November 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@googlemap.com. Also on November 30, 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, December 31, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
A. Policy 4(a)(i): Complainant’s rights and the confusing similarity of
Respondent’s <googlemap.com> domain name.
Complainant has used its GOOGLE MAPS mark since 2005, and has used the mark in conjunction with satellite, traffic, and topographical information.
Respondent registered the disputed domain name on or about May 21, 2007.
Complainant has used the GOOGLE mark continuously since 1997, well prior to the registration date. Complainant also has registered the GOOGLE mark prior to the registration date with the United States Patent and Trademark Office ("USPTO"). See, e.g., USPTO Reg. No. 2,806,075 registered January 20, 2004.
Respondent’s <googlemap.com> domain name is confusingly similar because Respondent merely added the term “map,” which on its own, is generic for the online mapping services that are available from a website associated with the disputed domain name and which change the overall impression that the “map” services provided are connected with Complainant.
The addition of the generic top-level domain (“gTLD”) “.com” does nothing to relieve the confusing similarity between the disputed domain name and the Complainant’s mark.
B. Policy ¶ 4(a)(ii): Respondent has no rights or legitimate interests in the disputed domain name.
On information and belief, Respondent is not commonly known as the disputed domain name or any name containing the GOOGLE and/or GOOGLE MAPS marks. Respondent’s WHOIS information makes no mention of the domain name or GOOGLE marks. Furthermore, Complainant has not authorized Respondent to register or use the domain name, nor is Respondent in any way affiliated with Complainant.
Respondent is using the disputed domain name to resolve to a website featuring sponsored listings for services that relate to or compete with Complainant’s mapping services. See Complainant’s Annex 12.
Respondent is likely receiving click-through or referral fees from these hyperlinks and is thereby profiting by trading on the goodwill established by Complainant. This use of the disputed domain name is neither a bona fide offering of goods nor a legitimate noncommercial of fair use.
Respondent is typosquatting Complainant’s GOOGLE MAPS mark and <googlemaps.com> domain name by intentionally deleting the “s” in its <googlemap.com> domain name. Respondent has no rights to or legitimate interests when it seeks to get Internet users to visit the site because of inadvertent mistakes.
C. Policy ¶ 4(a)(iii): Respondent has registered and is using the disputed domain name in bad faith.
Respondent used the domain name to divert Internet users who sought GOOGLE services to other websites, including websites that compete with Complainant, in order to commercially benefit through the receipt of click-through fees. Respondent’s actions demonstrate bad faith under Policy ¶ 4(b)(iv).
Respondent had constructive knowledge of Complainant’s mark due to the fame of the GOOGLE brand and mark.
Respondent is typosquatting in relation to the GOOGLE MAPS mark, and this is in itself bad faith under Policy ¶ 4(a)(iii).
Respondent’s Contentions
Respondent did not submit a Response.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Complainant established that the disputed domain name is confusingly similar to Complainant’s protected mark and Complainant’s existing domain name sites.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 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 to 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 or Confusingly Similar:
Complainant primarily argues to protect its GOOGLE mark, which Complainant has used continuously since 1997. Complainant bases its claim to the GOOGLE mark on registrations with the a variety of international trademark registration entities, including the United States Patent & Trademark Office (“USPTO”) as well as the European Union’s Office for Harmonization in the Internal Market (“OHIM”). See, e.g., USPTO Reg. No. 2,806,075 registered January 20, 2004; OHIM Reg. No. 5,263,868 registered on August 23, 2007. Previous panels have found this Complainant’s rights in its GOOGLE mark to be well established through trademark registrations around the world. 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). Given that Respondent lists a German location in its WHOIS information, the Panel finds that Complainant established rights in the GOOGLE mark under Policy ¶ 4(a)(i) in Respondent’s area as well.
Complainant also contends that it has used its GOOGLE MAPS mark since 2005, and has used the mark in conjunction with satellite, traffic, and topographical information. Complainant notes that Respondent registered the disputed domain name on or about May 21, 2007. The Panel notes that it is not necessary for Complainant to have registered the GOOGLE MAPS mark specifically to have rights in that mark, which is a variant on its initial GOOGLE mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). In that regard, Complainant contends that the GOOGLE MAPS mark is used by more than a billion active users in some 200 countries. Complainant further contends that it has consistently used the mark in the promotion of its mapping services since 2005. Complainant also claims ownership of the <googlemaps.com> domain name and urges that it has used the domain since 2002. The Panel agrees that Complainant’s evidence of extensive use of the GOOGLE MAPS mark has given the mark secondary meaning that establishes common law rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant next argues that Respondent’s <googlemap.com> domain name is confusingly similar because Respondent merely added the term “map,” which on its own is generic for the online mapping services that Complainant provides under the GOOGLE mark. Complainant further alleges that the addition of the generic top-level domain (“gTLD”) “.com” does nothing to relieve the confusing similarity between the disputed domain name and the Complainant’s mark. The Panel agrees both that the gTLD “.com” is irrelevant to this analysis and that the addition of the term “map” does not differentiate Respondent’s domain name from the GOOGLE mark and mapping services offered under that mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive 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.”). Additionally, the Panel finds that the disputed domain name is confusingly similar to the GOOGLE MAPS mark because it merely deletes the “s” at the end of the 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). For these reasons the Panel finds that Respondent’s <googlemap.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests:
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 of proof shifts to Respondent to show that it does have such 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 alleges on information and its own belief that Respondent is not commonly known as the disputed domain name or any name containing the GOOGLE mark. Complainant notes that Respondent’s WHOIS information makes no mention of the domain name of GOOGLE marks. Furthermore, Complainant claims that it has not authorized Respondent to register or use the domain name, nor is Respondent in any way affiliated with Complainant. The Panel notes the WHOIS information lists the registrant as “Ibrahim Steinberg.” The Panel finds that the lack of evidence in the WHOIS information, as well as Complainant’s knowledge that Respondent is not authorized to use the GOOGLE mark, support Complainant’s contention that Respondent is not commonly known by the <googlemap.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the <googlemap.com> domain name to resolve to a website featuring sponsored listings for services that relate to or compete with Complainant’s mapping services. Complainant believes that the Respondent is likely receiving click–through or referral fees from these hyperlinks and is thereby profiting by trading on the goodwill established by Complainant. The Panel notes that the domain name resolves to a website under the domain name <satellite-maps.co.uk> that is dominated by a listing of hyperlinks to other websites, many of which solicit products and/or services that compete with or are related to the services provided by Complainant under the GOOGLE mark. See Complainant’s Annexes 12, 13. Previous panels have found that the use of a disputed domain name to solicit goods and services that compete with a confusingly similar mark constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). The Panel agrees and finds that Respondent is providing neither a bona fide offering of goods (Policy ¶ 4(c)(i)) nor a legitimate noncommercial or fair use (Policy ¶ 4(c)(iii)).
Complainant contends that Respondent is typosquatting Complainant’s GOOGLE MAPS mark and <googlemaps.com> domain name by intentionally deleting the “s” in its <googlemap.com> domain name. Complainant argues that Respondent has no rights or legitimate interests when it gets Internet users to visit the site merely by capitalizing on common spelling errors by the user. The Panel agrees with Complainant that Respondent seeks to take advantage of the mistakes of Internet users. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel agrees and finds a lack of rights and legitimate interests in the <googlemap.com> domain name under Policy ¶ 4(a)(ii)
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name; Complainant satisfied the elements of ICANN Policy ¶
4(a)(ii).
Registration and Use in Bad Faith:
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. Complainant contends that Respondent is using the domain name to divert Internet users who sought GOOGLE services to other websites, including websites that compete with Complainant, in order to commercially benefit through the receipt of click-through fees. Complainant contends that this behavior demonstrates bad faith under Policy ¶ 4(b)(iv). The Panel notes that the <satellite-maps.co.uk> domain name, which the disputed domain name resolves to, features hyperlinks to a variety of third-party and competing mapping programs, software, and services. See Complainant’s Annexes 12, 13. Use of a disputed domain for the purpose of generating commercial gains by confusing Internet users as to a suggested affiliation with a complainant’s mark constitutes bad faith use and registration. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). This Panel agrees that Respondent’s registration and use also supports findings of bad faith under Policy ¶ 4(b)(iv).
Complainant next contends that Respondent had constructive knowledge of Complainant’s mark, if not actual knowledge due to the fame of the GOOGLE brand and mark. The Panel finds that any argument of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, due to the fame of the GOOGLE mark, and the use of the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant argues that Respondent is typosquatting the GOOGLE MAPS mark, and that this is in itself supports findings of bad faith under Policy ¶ 4(a)(iii). The Panel agrees and finds that the similarity between the GOOGLE MAPS mark and the <googlemap.com> domain name epitomizes bad faith use and registration under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Respondent makes no contentions relative to 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 <googlemap.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 14, 2013.
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