national arbitration forum

 

DECISION

 

Google Inc. v. Google Inc

Claim Number: FA1304001492304

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA.  Respondent is Google Inc (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleglass-presale.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2013; the National Arbitration Forum received payment on April 1, 2013.

 

On April 1, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <googleglass-presale.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@googleglass-presale.com.  Also on April 3, 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 May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

 

Respondent’s <googleglass-presale.com>domain name, the domain name at issue, is confusingly similar to Complainant’s GOOGLE mark.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google Inc., maintains one of the world’s largest collections of searchable documents. Complainant provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content in many different languages. Complainant's primary website is located at <google.com>.  Complainant is the owner 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), for the GOOGLE GLASS mark (Serial Number 85,723,835, priority date March 14, 2012), and for the GLASS mark (Serial Number 85,661,672, priority date March 14, 2012). 

 

Respondent’s <googleglass-presale.com> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent merely added the term “glass,” a hyphen, the generic term “presale,” and a generic top-level domain (“gTLD”) “.com.”  Respondent is not commonly known as the domain name or any name containing any of the GOOGLE marks.  Respondent used the domain name to resolve to a website that falsely purported to offer presales of Complainant’s “Glass” device for the payment of $499 (plus taxes). Respondent has made every attempt to pass itself off as Complainant online.  Respondent’s prior use of the domain name to compete with Complainant, by falsely offering presales of Complainant’s product, is disruptive to Complainant’s business.  Respondent’s is intentionally attempting to attract Internet users to its website by creating a strong possibility of confusion with the GOOGLE mark in order to defraud and commercially benefit from individuals who mistakenly believe they are making preorders to the “Glass” devices through Complainant.  Further, Respondent’s use of the domain name to mimic Complainant’s website for the “Glass” device and impersonation of Complainant in the contact details for the WHOIS record for the domain name constitutes passing off.  The fame of the GOOGLE mark, as well as the extensive use, media coverage, and increasing notoriety of the GOOGLE marks, make it extremely unlikely that Respondent created the domain name independently.  Respondent registered the <googleglass-presale.com> domain name on March 14, 2013.

 

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, Google Inc., maintains one of the world’s largest collections of searchable documents, and it provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, allowing Internet users to search for and find a wide variety of content in many different languages. Complainant’s primary website is located at <google.com>. Moreover, Complainant is the owner of trademark registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004) for the GOOGLE GLASS mark (Serial Number 85,723,835, priority date March 14, 2012), and for the GLASS mark (Serial Number 85,661,672, priority date March 14, 2012).  The Panel therefore concludes that Complainant’s registration of the GOOGLE mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Respondent’s <googleglass-presale.com> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent merely added the term “glass.” Respondent has derived the term “glass” from Complainant’s GLASS mark.  Respondent’s addition of a descriptive term “glass” does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Respondent adds a hyphen to the disputed domain name, however, this does not differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Further, Respondent adds the generic term “presale” to the disputed domain name. The addition of a generic term to the domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Lastly, Respondent adds the gTLD “.com” to the disputed domain name. The addition of a gTLD to a domain name is inconsequential to a confusingly similar analysis under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus,

Respondent’s <googleglass-presale.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

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); 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.”).

 

Respondent is not commonly known as the domain name or any name containing any of the GOOGLE marks.  Although the WHOIS record for the domain name falsely lists “Google Inc.” with its California address and lists “googleglass” within the email address for Respondent, there is no evidence that Respondent is, in fact, commonly known by the disputed domain name.  Complainant has not authorized Respondent to register or use the domain name. Although Respondent appears to be known by the domain name, the Panel finds that Respondent has not provided evidence that it is known by the WHOIS information, and therefore is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

Respondent used the domain name to resolve to a website that falsely purported to offer presales of Complainant’s “Glass” device for the payment of $499 (plus taxes). Further, Respondent has made every attempt to pass itself off as Complainant online, by copying the look and design of Complainant’s website for the “Glass” device (including images from that website), using the GOOGLE mark, and using the GOOGLE name on the resolving website and falsely listing Complainant’s contact information in the WHOIS record for the domain name. Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

 

Registration and Use in Bad Faith

Respondent’s prior use of the domain name to compete with Complainant, by falsely offering presales of Complainant’s product, is disruptive to Complainant’s business.  Respondent used the domain name in connection with a website that copied the look and design of Complainant’s website for the “Glass” device and falsely purported to offer presales of the “Glass” device.  Therefore, Respondent’s use of the disputed domain name to falsely offer presales of Complainant’s “Glass” device disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent’s intentionally attempting to attract Internet users to its website by creating a strong possibility of confusion with the GOOGLE mark in order to defraud and commercially benefit from individuals who mistakenly believe they are making preorders to the “Glass” devices through Complainant. Respondent used the domain name to resolve to a website that falsely purported to offer presales of Complainant’s “Glass” device for the payment of $499 (plus taxes). Respondent’s use of the disputed domain name to intentionally attract Internet users to its own website for its own commercial gain shows bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Respondent’s use of the domain name to mimic Complainant’s website for the “Glass” device and impersonation of Complainant in the contact details for the WHOIS record for the domain name constitutes passing off. Respondent has made every attempt to pass itself off as Complainant online, by copying the look and design of Complainant’s website for the “Glass” device (including images from that website), using the GOOGLE mark, and using the GOOGLE name on the resolving website and falsely listing Complainant’s contact information in the WHOIS record for the domain name. Respondent’s use of the disputed domain name to pass itself off as Complainant shows bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

The fame of the GOOGLE mark, as well as the extensive use, media coverage, and increasing notoriety of the GOOGLE marks, make it extremely unlikely that Respondent created the domain name independently.  The fact that the website that resolved from the domain name mimicked Complainant’s “Glass” website and falsely offered presales of Complainant’s “Glass” product is further evidence that Respondent had actual knowledge of the GOOGLE mark. Thus, the Panel holds 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).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

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

 

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

 

 

James A. Carmody, Esq., Panelist

Dated:  May 2, 2013

 

 

 

 

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