Google Inc. v. Private Person / 3318201, 3318205, 3318199, 3318213, 3318197, 3318203, 3318207, 3318195, 3318211, 3318209
Claim Number: FA1212001477115
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Private Person / 3318201, 3318205, 3318199, 3318213, 3318197, 3318203, 3318207, 3318195, 3318211, 3318209 (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com>, registered with Click Registrar, Inc. d/b/a publicdomainregistry.com.
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 21, 2012; the National Arbitration Forum received payment on December 26, 2012.
On December 22, 2012, Click Registrar, Inc. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names are registered with Click Registrar, Inc. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the names. Click Registrar, Inc. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Click Registrar, Inc. d/b/a publicdomainregistry.com 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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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-api1.com, postmaster@google-api2.com, postmaster@google-api3.com, postmaster@google-api4.com, postmaster@google-api5.com, postmaster@google-api6.com, postmaster@google-api7.com, postmaster@google-api8.com, postmaster@google-api9.com, and postmaster@google-api10.com. Also on January 8, 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 4, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant’s Russian trademark registration of the GOOGLE mark (e.g., Reg. No. 191,819 registered August 2, 2000) predates Respondent’s registration of the disputed domain names.
a. Respondent registered each of the disputed domain names on July 23, 2012.
2. Each of Respondent’s <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names is confusingly similar to Complainant’s GOOGLE mark.
a. “API” describes the application programming interfaces made available by Complainant under the GOOGLE mark.
3. Respondent is not commonly known as any of the contested domain names or any name containing Complainant’s GOOGLE mark.
4. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way.
5. The disputed domain names resolve to websites blocked by anti-virus software due to the presence of a ‘Malicious software threat.’
a. Specifically, Complainant’s anti-virus software states that the websites to which the contested domains resolve ‘contain links to viruses or other software programs that can reveal personal information stored or typed on your computer to malicious persons.’
b. Respondent benefits financially when users who access these websites are exposed to malicious software that infects their computers or devices.
6. Respondent had knowledge of Complainant and its rights in the GOOGLE mark at the time Respondent registered the disputed domain names.
a. Complainant’s GOOGLE mark is well-known.
b. Complainant’s trademark registrations establish constructive knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 contends that many of its trademark registrations for the GOOGLE mark, including its registration with the Russian Federation with ROSPATENT (e.g., Reg. No. 191,819 registered August 2, 2000), predate Respondent’s registration of the disputed domain names. The Panel finds that Complainant’s Russian trademark registrations for the GOOGLE mark establish rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant also contends that each of Respondent’s <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names is confusingly similar to Complainant’s GOOGLE mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that each disputed domain adds a hyphen, the term “api,” a number from 1 to 10, and the generic top-level domain (“gTLD”) “.com” to Complainant’s GOOGLE mark. Complainant claims that the term “API” describes the application programming interfaces made available by Complainant under the GOOGLE mark. Accordingly, the Panel finds that the term “api” in the disputed domain names is descriptive of Complainant’s business. The Panel finds that none of Respondent’s additions to Complainant’s mark are sufficient, either singularly or cumulatively, to distinguish the disputed domains from Complainant’s mark under Policy ¶ 4(a)(i). 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); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”). The Panel holds that each of Respondent’s <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names is confusingly similar to Complainant’s GOOGLE mark for the purposes of 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 asserts that Respondent is not commonly known as any of the <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, or <google-api10.com> domain names or any name containing Complainant’s GOOGLE mark. Complainant notes that the WHOIS information, which lists Respondent as “Private Person / 3318201, 3318205, 3318199, 3318213, 3318197, 3318203, 3318207, 3318195, 3318211, or 3318209,” does not appear to suggest that Respondent is commonly known by any of the disputed domains. Complainant also states that it has not authorized or licensed Respondent to use any of its trademarks in any way. The Panel further notes that Respondent has failed to satisfy its burden of providing a Response. In light of the evidence, the Panel determines that Respondent is not commonly known by any of the disputed domain names within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s use of the contested domains is not a bona fide offering of goods or services or a legitimate noncommercial use. Complainant claims that the disputed domain names resolve to websites blocked by anti-virus software due to the presence of a ‘Malicious software threat.’ Complainant asserts that its anti-virus software states that the websites to which the contested domains resolve ‘contain links to viruses or other software programs that can reveal personal information stored or typed on your computer to malicious persons.’ Complainant posits that Respondent generates a financial benefit when users who access these websites are exposed to malicious software that infects their computers or devices. The Panel finds that Respondent’s use of the disputed domain names for this purpose establishes that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use of the disputed domains under Policy ¶4(c)(iii). See Dell Inc. v. tawnya grilth c/o dellpc.us,
FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that Respondent was not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name where the disputed domain resolved to a site offering malware and malicious software downloads and Respondent presumably benefitted financially from this arrangement.).
Complainant has proven this element.
The Panel notes that it is not bound by the bad faith factors identified in Policy ¶ 4(b), but makes its bad faith determination based upon all of the facts and circumstances surrounding Respondent’s registration and use of the disputed domain names. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent had knowledge of Complainant and its rights in the GOOGLE mark at the time Respondent registered the disputed domain names, based on the fame and unique qualities of Complainant’s GOOGLE mark. Complainant also contends that its trademark registrations establish constructive knowledge of Complainant’s mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names 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 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).
Finally, Complainant argues that bad faith registration and use is established where, as here, the disputed domain names resolve to a corrupted website that contains viruses. The Panel finds that Complainant’s use of the <google-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names to provide links to sites containing malware or viruses exhibit bad faith registration and use of the domains pursuant to Policy ¶ 4(a)(iii). See Top Rx, Inc. v. Saravanan Hoxworth, FA 1440420 (Nat. Arb. Forum June 12, 2012); see also Orbotech Ltd. v. Above.com Domain Privacy / Host Master, FA 1392102 (July 21, 2011).
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-api1.com>, <google-api2.com>, <google-api3.com>, <google-api4.com>, <google-api5.com>, <google-api6.com>, <google-api7.com>, <google-api8.com>, <google-api9.com>, and <google-api10.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 5, 2013
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