national arbitration forum

 

DECISION

 

Google Inc. v. DATA Sentinel

Claim Number: FA1211001473771

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA.  Respondent is DATA Sentinel (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleplacesuk.com>, registered with Tucows.com Co.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on December 3, 2012.

 

On November 30, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <googleplacesuk.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name.  Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@googleplacesuk.com.  Also on December 3, 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 January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <googleplacesuk.com> domain name, the domain name at issue, is confusingly similar to Complainant’ GOOGLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the GOOGLE mark, which was created in 1997 and has come to represent one of the largest and most highly recognized Internet search services. Complainant uses the <google.com> domain name as its primary website and owns hundreds of additional GOOGLE-formative domain names. Complainant owns trademark registrations with various agencies around the world for its GOOGLE mark, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004), the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA539,576 registered January 12, 2001), and the United Kingdom’s Intellectual Property Office (“UKIPO”) (e.g., Reg. No.2,410,931 registered January 12, 2006).  Complainant introduced a service known as Google Places in April 2010, which provides business owners free tools to manage their business presence on Complainant’s website.

 

Respondent registered the <googleplacesuk.com> domain name on March 13, 2012, and created a website to which the domain name resolves that displays the heading “First Page Google For Local UK Businesses and Services” and advertises services for a business referred to as “Google Places UK,” describing itself as a “cost effective, simple & Tailored UK based services to get your business online.” The resolving website also displays a “favicon,” which is an Internet browser address bar icon that looks identical to Complainant’s favicon. The <googleplacesuk.com> domain name is confusingly similar to Complainant’s GOOGLE PLACES mark and Respondent is not commonly known by the disputed domain name. Respondent fails to demonstrate rights or legitimate interests in the <googleplacesuk.com> domain name due to its use of the domain name to host a commercial website that provides Internet consulting and marketing services in competition with Complainant’s business. Respondent registered and uses the <googleplacesuk.com> domain name in bad faith by using Complainant’s GOOGLE mark to confuse consumers and enticing them to use Respondent’s competing marketing services, from which Respondent makes a financial profit.

 

 

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 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.”).

 

Identical and/or Confusingly Similar

Complainant’rights in the GOOGLE mark are secured by its various international trademark registrations, such as its registrations with the USPTO (e.g., Reg. No. 2,884,502 registered September 14, 2004), the CIPO (e.g., Reg. No. TMA539,576 registered January 12, 2001), and the UKIPO (e.g., Reg. No. 2,410,931 registered January 12, 2006). The panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), held that the complainant’s rights in its mark were established by its many trademark registrations with several trademark authorities throughout the world, including with the USPTO. Complainant has demonstrated rights in its GOOGLE mark pursuant to Policy ¶ 4(a)(i) through its numerous trademark registrations.

 

The <googleplacesuk.com> domain name is confusingly similar to the GOOGLE mark, as the domain name includes the mark in its entire form, adding the descriptive term “places,” which refers to Complainant’s Google Places services. The addition of the geographic term “uk,” which is an abbreviation for “United Kingdom,” as well as the generic top-level domain (“gTLD”) “.com” adds to the confusing similarity of the domain name to the mark. The Panel concludes that the <googleplacesuk.com> domain name, by including a term descriptive of Complainant’s services, a geographic identifier, and a gTLD, causes confusing similarity between the <googleplacesuk.com> domain name and Complainant’s GOOGLE mark. 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 Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also 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”).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or 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 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.”).

 

Respondent could not be commonly known by the <googleplacesuk.com> domain name, due to the WHOIS information associated with the domain name, which the Panel notes indicates that the registrant is known as “DATA Sentinel.” The Panel thus concludes that Respondent is not commonly known by the <googleplacesuk.com> domain name pursuant to Policy ¶ 4(c)(ii) as a result of the conflicting WHOIS information. 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).

 

Respondent fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <googleplacesuk.com> domain name because the resolving website offers a service described as an “[I]nternet consulting and marketing service.” The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), concluded that by using the complainant’s well-known mark to attract Internet users to its domain name where the respondent sold competing products did 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(c)(iii). Respondent’s lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) is evidence that Respondent does not possess legitimate rights or interests in the <googleplacesuk.com> domain name.

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent registered and uses the <googleplacesuk.com> domain name in bad faith, because the resolving website offers visitors consulting and marketing services under the GOOGLE mark, and results in a commercial benefit to Respondent.  The fame and unique nature of Complainant’s GOOGLE mark make it unlikely that Respondent created the disputed domain name independently. The Panel finds that Respondent appropriates the GOOGLE mark to host a website offering competing services to those of Complainant and concludes that such use is meant to attract Internet consumers and generate revenue for Respondent, demonstrating Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The <googleplacesuk.com> domain name is obviously connected with Complainant’s well-known GOOGLE name and services, and it is unlikely Respondent could not have chosen the domain name for any reason aside from attempting to take advantage of Complainant’s mark. The Panel determines that Respondent’s registration of the <googleplacesuk.com> domain name to host competing services to that of Complainant’s business is evidence that Respondent was aware of Complainant and its GOOGLE mark when Respondent registered the domain name.   Respondent’s actual knowledge demonstrates bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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

 

 

James A. Carmody, Esq., Panelist

Dated:  January 11, 2013

 

 

 

 

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