Google Inc. v. ResolutionSet / Derek Stevens
Claim Number: FA1302001486193
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA. Respondent is ResolutionSet / Derek Stevens (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doublcleeck.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 21, 2013.
On February 22, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <doublcleeck.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@doublcleeck.com. Also on February 27, 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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <doublcleeck.com> domain name is confusingly similar to Complainant’s DOUBLECLICK mark.
2. Respondent does not have any rights or legitimate interests in the <doublcleeck.com> domain name.
3. Respondent registered and used the <doublcleeck.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds trademark registrations for its DOUBLECLICK mark with the U.S. Patent and Trademark Office (“USPTO”) and other trademark authorities (e.g. USPTO Reg. No. 2,386,809, issued September 19, 2000). Complainant uses the DOUBLECLICK mark for online display advertising.
Respondent registered the <doublcleeck.com> domain name on June 28, 2012, and uses it for a website that copies content directly from Complainant’s website at <doubleclick.com>, to offer competing products, and to fraudulently collect payments from Internet users.
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.”).
The Panel finds that Complainant has rights in the DOUBLECLICK mark pursuant to Policy ¶ 4(a)(i), based on its registration with the USPTO. Panels routinely find that registration of a mark with a federal trademark authority is evidence of rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <doublcleeck.com> domain name is confusingly similar to the Complainant’s DOUBLECLICK mark, since it is simply a misspelling of Complainant’s mark, along with the addition of a gTLD. These changes are insufficient to distinguish the disputed domain names from Complainant’s mark. The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), held that gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis. Additionally, the panel in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), held that misspelling a mark does not differentiate the domain name from the mark within it.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent is not commonly known by the <doublcleeck.com> domain name. The WHOIS records list “ResolutionSet / Derek Stevens” as the registrant of the disputed domain name. Complainant states that it has not authorized Respondent to use the DOUBLECLICK mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 asserts that Respondent uses the <doublcleeck.com> domain name for a website that copies content directly from Complainant’s website at <doubleclick.com> and directly competes with Complainant. Panels have previously held that, where a Respondent uses a domain name to offer goods and services in competition with the complainant’s offerings, the respondent demonstrates a lack of rights and legitimate interests. Copying Complainant’s website content and attempting to pass itself off as Complainant also demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name. See Toon Boom Animation Inc. v. Hayes, FA445950 (Nat. Arb. Forum July 5, 2012) (finding that respondent’s use of the disputed domain name to promote its directly competing software and copying of complainant’s website to create confusion as to complainant’s involvement with the website resolving from the disputed domain name did not constitute 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 also Choice Hotels Int’l, Inc. v. Koot, FA 283172 (Nat. Arb. Forum Oct. 21, 2009) (finding that respondent’s use of the disputed domain name for a website that copied content from complainant’s franchisee’s website showed that respondent was attempting to pass itself off as complainant and evidence that respondent lacked rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Finally, Complainant shows that Respondent fraudulently solicits advance payments from Internet users and then disappears without delivering anything, the clearest proof that Respondent does not hold any legitimate claim to the disputed domain name. See Samsung Elecs. Co. v. Carter, Case No. D2010-1367 (WIPO Oct. 19, 2010) (finding that respondent’s “advanced-fee scam”, which was designed to extract money from its victims under the guise of processing fees or transfer charges, “cannot be evidence of any rights or legitimate interests in the domain name.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent clearly demonstrates that it had prior knowledge of Complainant’s DOUBLECLICK mark, since it copied content directly from Complainant’s website at <doubleclick.com>, evidence of bad faith under Policy ¶ 4(a)(iii). See Toon Boom Animation Inc., FA 445950 (finding bad faith registration under Policy ¶ 4(a)(iii) where respondent had copied sections of complainant’s website, demonstrating that respondent had prior knowledge of complainant’s long-standing rights in the asserted mark).
Respondent registered a domain name that is an intentional misspelling or typosquatting of Complainant’s DOUBLECLICK mark. Previous panels have held that typosquatting is evidence of bad faith use and registration. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent uses the <doublcleeck.com> domain name to divert Internet users seeking Complainant to Respondent’s website to generate revenue, disrupting Complainant’s business. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ Policy ¶ 4(b)(iii) and 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), where the panel held that the display of competitive links on a disputed domain name is disruptive to the complainant’s business; see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent uses the <doublcleeck.com> domain name in an attempt to pass itself off as Complainant by mimicking Complainant’s website, additional evidence of bad faith. See American Express Marketing & Development Corp. v. chen chao, FA 438527 (Nat. Arb. Forum, May 21, 2012) (finding that respondent’s copying of protected trademarks and copyrighted content from complainant’s site and placing it on the website resolving from the disputed domain name was evidence of bad faith registration and use).
Respondent also uses the <doublcleeck.com> domain name to fraudulently collect fees from Internet users, a further display of bad faith. See Dr. Martens Int’l Trading GmbH v. Jordan, FA 461350 (Nat. Arb. Forum Oct. 17, 2012) (finding bad faith registration and use of the disputed domain name where it was used for phishing sites in order to defraud customers, who placed orders on the websites and whose credit cards were charged, but who never received the merchandise).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doublcleeck.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2013
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