Google Inc. v. Li Dijam Candoohar / Cayman WebLabs, LLC
Claim Number: FA1212001476964
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Li Dijam Candoohar / Cayman WebLabs, LLC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz>, registered with Active 24 AS.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2012; the National Arbitration Forum received payment on December 21, 2012.
On January 7, 2013, Active 24 AS confirmed by e-mail to the National Arbitration Forum that the <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names are registered with Active 24 AS and that Respondent is the current registrant of the names. Active 24 AS has verified that Respondent is bound by the Active 24 AS 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 January 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@google-marketing.biz, postmaster@adwords-international.com, and postmaster@adwords-international.biz. Also on January 10, 2013, 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 February 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 issues 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.
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Correspondence—Respondent.” In this document, Respondent consents to the transfer of the <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names. Since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12 (b) the Panel will issue a decision.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent’s Contentions
Altogether the Forum received other correspondence from Respondent, the Forum did not receive a formal, timely Response. Respondent alleges in its correspondence that all three domain names were purchased legally and are being used to advertise its client’s businesses through Complainant’s Adwords systems. Respondent contends that its business generates revenues for Complainant because it must purchase advertising from Complainant’s businesses. Respondent states that it has tried to resolve every issue of this dispute with Complainant’s attorneys out of court.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.”).
Complainant asserts that it owns both United States and Cayman Islands registrations in the GOOGLE mark. See USPTO Reg No. 2,806,075 registered on Jan. 20, 2004; ORG Reg. No. 2,410,931 registered on June 7, 2010. Complainant also notes that it owns registration for the ADWORDS mark in the United States (USPTO Reg. No. 2,794,616 registered on December 16, 2003) and in the Cayman Islands (ORG Reg. No. 2,442,043 registered on January 21, 2008). The Panel agrees that Complainant’s evidence of registration both with the USPTO as well as in the Respondent’s country—Cayman Islands—establishes Complainant’s rights under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s domain names are confusingly similar to Complainant’s marks. The Panel notes Complainant’s argument that the <google-marketing.biz> domain name merely adds the term “marketing” to the GOOGLE mark. Complainant claims that this term is plainly referring to the advertising services offered under the GOOGLE mark. The Panel also notes that in addition to the additional term, the Respondent has added a hyphen and the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel agrees that neither a hyphen nor gTLD differentiates the domain name from the GOOGLE mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel also agrees that the additional term “marketing” does not defeat the confusing similarity between the domain name and the GOOGLE mark because the term is merely descriptive of some of the services Complainant provides under its GOOGLE 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.”). The Panel finds that the <google-marketing.biz> domain name is confusingly similar to the GOOGLE mark under Policy ¶ 4(a)(i).
The Panel notes that Complainant compares the <adwords-international.com> and <adwords-international.biz> domain names to the ADWORDS mark. Complainant argues that both the domain names merely add the generic term “international” to the ADWORDS mark. The Panel finds that the hyphen and gTLD are irrelevant in this analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel agrees that the addition of the geographic term “international” does nothing to distinguish the domain names from the mark. See 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.”). Therefore the Panel finds that the <adwords-international.com> and <adwords-international.biz> domain names are confusingly similar to the ADWORDS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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. Complainant satisfies its burden, the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that the disputed domain names’ WHOIS information make no mention of the Respondent. Complainant further asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. Complainant claims that it can find no other indication that Respondent is known by any of the <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names. The Panel notes that the WHOIS information lists one “Li Dijam Candoohar” as the registrant of the names. Previous panels have concluded that a respondent cannot be commonly known by a disputed domain name when no evidence, including the WHOIS information, can link the respondent to a disputed domain name. 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). The Panel agrees that Respondent similarly has nothing connecting it with the <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names and therefore is not commonly known by these names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent seeks to use the disputed domain names solely to benefit from diverting Internet users from Complainant’s business. Complainant further avers that Respondent’s <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names resolve to websites purporting to offer services related to Complainant’s business in violation of Complainant’s Third-Party Policy by guaranteeing Internet users top placements in searches done on Complainant’s search engine. Complainant argues that such a use by Respondent cannot be a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names. The Panel notes that all three of the disputed domain names resolve to websites that promote Respondent’s ability to market the services of, and boost the Internet presence of, its audience. Previous panels have concluded that there is no bona fide offering of goods or services, nor a legitimate noncommercial or fair use, when a respondent uses a confusingly similar domain name to host websites that are in a competing use with a complainant’s business. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent is engaging in a similar use of its domain names, and conclude that none of the domain names provide a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant finally contends that Respondent is attracting commercial gain by confusing Internet users into believing the <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names are somehow affiliated with Complainant. Complainant believes that Respondent profits by gaining business through this false association. Complainant notes that Respondent includes logos associated with the GOOGLE and ADWORDS marks on these disputed domain names, and does so in order to strengthen the confusion of Internet users. Respondent falsely purports to be “ADWORDS Qualified” and thus deceives consumers into believing the domain names are associated with Complainant. The Panel agrees that Respondent’s endeavor to use the domain names to confuse Internet users into believing they are dealing with a Complainant-approved business, when Respondent is in fact competing with Complainant, illustrates a bad faith use and registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant has proven this element.
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 <google-marketing.biz>, <adwords-international.com>, and <adwords-international.biz> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 12, 2013
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