Google Inc. v. maple st
Claim Number: FA1212001473957
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is maple st (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <googleplaygifts.com>, which is registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 3, 2012; the National Arbitration Forum received payment on December 4, 2012.
On December 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <googleplaygifts.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 December 5, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 26, 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, adminis-trative, and billing contacts, and to postmaster@googleplaygifts.com. Also on December 5, 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 7, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the GOOGLE mark, which it has used since 1997 to market an Internet search engine.
Complainant also owns the <google.com> domain name, which resolves to its primary website.
Complainant holds a registration of the GOOGLE trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,806,075, registered January 20, 2004.
On March 6, 2012, Complainant introduced at its online retail store a service de-nominated Google Play, which allows Internet users to purchase music, books, magazines, movies, television shows, applications and games.
Respondent registered the <googleplaygifts.com> domain name on July 11, 2012, and employs it to operate a website that offers Internet users a “Chance to Win Free Prizes” if they download an application for Android devices.
The website entices Internet users to earn prizes by participating in research, and instructs them to choose a free gift and then redirects them to a website that collects user information, including e-mail addresses.
Respondent’s use of the <googleplaygifts.com> domain name is a “phishing scheme,” through which it seeks to obtain personal information from consumers by passing itself off as Complainant.
The <googleplaygifts.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent has not been commonly known by the <googleplaygifts.com> domain name, and Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE trademark in any way.
Respondent’s employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent does not have any rights to or any legitimate interests in the dis-puted domain name.
Respondent both registered and uses the <googleplaygifts.com> domain name in bad faith.
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.
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.”
Complainant has rights in its GOOGLE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009), the panel there finding that a UDRP complainant had sufficiently established rights in a claimed mark through its registration of the mark with national trademark authorities.
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the <googleplaygifts.com> domain name is confusingly similar to the GOOGLE mark. The domain name contains the entire GOOGLE mark, merely adding the descriptive terms, “play” and “gifts,” which relate to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding con-fusing similarity where the domain name <kohlerbaths.com> contained a com-plainant’s entire mark while adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
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 UDRP 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 inter-ests); 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 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 <googleplaygifts.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE trademark in any way. Moreover, the pertinent WHOIS information identifies the domain name’s registrant only as “maple st,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <googleplaygifts.com> do-main name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com>, and so had no rights to or legitimate interests in the domain name as described in Policy ¶ 4(c)(ii), where there was no evidence in the rec-ord, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <googleplaygifts.com> domain name to redirect Internet users seeking Complainant’s website to a website that lures them with offers of free prizes in exchange for disclosure of their personal information. This is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel there holding that a respondent’s attempt to employ a domain name which was confusingly similar to the mark of another to gain Internet user’s personal information was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The considerations set out in Policy ¶ 4(b) are not an exclusive list of behaviors that may be relied upon to determine bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) identifies circumstances which, without limitation, may be taken as evidence of registration and use of a domain name in bad faith). We may therefore look to the totality of the circum-stances presented in the Complaint in evaluating the question of bad faith regis-
\tration and use of the disputed domain name under Policy ¶ 4(a)(iii).
We first consider that the evidence establishes that Respondent uses the contested <googleplaygifts.com> domain name, which is confusingly similar to Complainant’s GOOGLE trademark, to conduct a “phishing” scheme aimed at gaining personal information from visitors to its website. This reveals bad faith in the registration and use of the domain name under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use of a domain name where a respondent used it to redirect Internet users to a website that imitated a UDRP complainant’s website, thereby fraudulently to acquire personal information from that complainant’s customers).
We are also persuaded from the evidence that Respondent knew of Complainant and its GOOGLE mark when it registered the <googleplaygifts.com> domain name, and that this stands as further evidence that Respondent registered the domain name in bad faith. See, for example, Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that bad faith registration of a domain name was shown where the link between a UDRP complainant's mark and the content advertised on a respondent's website was obvious, so that that respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <googleplaygifts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 14, 2013
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