national arbitration forum

 

DECISION

 

Google Inc. v. signupgoogleadsense

Claim Number: FA1212001474818

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA.  Respondent is signupgoogleadsense (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <signupgoogleadsense.com>, registered with WILD WEST DOMAINS, LLC.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 11, 2012.

 

On December 10, 2012, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <signupgoogleadsense.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name.  WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@signupgoogleadsense.com.  Also on December 13, 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 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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

    1. Complainant, Google Inc., provides Internet search engine services. Complainant launched its ADSENSE ad placement service in June 2003, allowing users to earn revenue by showing third-party advertisements on the user’s website, mobile site and/or along with the user’s site search results.
    2. Complainant owns and provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004) and for the ADSENSE mark (e.g., Reg. No. 2,881,856, registered September 7, 2004). Complainant also owns and shows evidence of trademark registrations for the GOOGLE and ADSENSE marks with numerous trademark agencies throughout the world.
    3. Respondent’s <signupgoogleadsense.com> domain name is nearly identical or confusingly similar to Complainant’s mark as Respondent has merely added the generic term “sign up” and the generic top-level domain (“gTLD”) “.com” to the domain name.
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    Although Respondent’s WHOIS records lists its name as “signupgoogleadsense,” there is no evidence that Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent to register or use the domain name. Respondent is not affiliated with, associated with, and/or otherwise endorsed by Complainant.

                                         ii.    Respondent’s disputed domain name does not currently resolve to an active webpage.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    It is extremely unlikely that Respondent’s disputed domain name was created independently given the fame and unique qualities of the GOOGLE, ADSENSE, and GOOGLE ADSENSE marks. Respondent had constructive knowledge of Complainant’s marks.

                                         ii.    Respondent is failing to make an active use of the disputed domain name since its registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google Inc., provides Internet search engine services. Complainant launched its ADSENSE ad placement service in June 2003, allowing users to earn revenue by showing third-party advertisements on the user’s website, mobile site and/or along with the user’s site search results.  Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004) and for the ADSENSE mark (e.g., Reg. No. 2,881,856, registered September 7, 2004). Complainant also owns trademark registrations for the GOOGLE and ADSENSE marks with numerous trademark agencies throughout the world.

 

Respondent, signupgoogleadsense, registered the <signupgoogleadsense.com> domain name on September 19, 2011. Respondent’s disputed domain name does not currently resolve to an active webpage.

 

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 owns trademark registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004) and for the ADSENSE mark (e.g., Reg. No. 2,881,856, registered September 7, 2004). Complainant also owns trademark registrations for the GOOGLE and ADSENSE marks with numerous trademark agencies throughout the world. The Panel concludes that Complainant’s registration of the GOOGLE and ADSENSE marks with the USPTO is sufficient to establish its rights in the marks 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 contends that Respondent’s <signupgoogleadsense.com> domain name is nearly identical or confusingly similar to Complainant’s marks as Respondent has merely added the generic term “sign up” to Complainant’s GOOGLE and ADSENSE marks. The addition of a generic term does not adequately distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). Respondent has added the gTLD “.com” to the domain name. The addition of a gTLD to the domain name is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, the Panel finds that Respondent’s <signupgoogleadsense.com> domain name is nearly identical or confusingly similar to Complainant’s GOOGLE and ADSENSE marks under Policy ¶ 4(a)(i).

 

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).

 

Complainant contends that although Respondent’s WHOIS records lists its name as “signupgoogleadsense,” there is no evidence that Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized Respondent to register or use the domain name. Complainant argues that Respondent is not affiliated with, associated with, and/or otherwise endorsed by Complainant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Complainant argues that Respondent’s disputed domain name does not currently resolve to an active webpage. Complainant further argues that there is no evidence that the domain name has ever been in active use since its registration over a year ago, or that Respondent has any intention of using the disputed domain name in any manner. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Registration and Use in Bad Faith

 

The Panel notes that although Complainant does not argue any of the specific circumstances listed under Policy ¶ 4(b), the examples of bad faith in Policy ¶ 4(b) are intended to be illustrative, and not exclusive. 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.”). Other criteria can show evidence of bad faith use and registration.

 

Respondent has failed to make active use of the disputed domain name since its registration. Thus, the Panel finds that Respondent’s failure to make an active use of the domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

Complainant asserts that it is extremely unlikely that Respondent’s disputed domain name was created independently given the fame and unique qualities of the GOOGLE, ADSENSE, and GOOGLE ADSENSE marks. Complainant also argues that Respondent had constructive knowledge of Complainant’s marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame and unique qualities of Complainant's GOOGLE mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, 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).

 

DECISION

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

 

Accordingly, it is Ordered that the <signupgoogleadsense.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 22, 2013

 

 

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