Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1304001493670
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <play-gogles.com>, registered with INTERNET.BS CORP.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 9, 2013.
On April 8, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <play-gogles.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@play-gogles.com. Also on April 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 May 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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
Complainant asserts trademark rights in GOOGLE and GOOGLE PLAY and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides an internet search engine and other web-based applications by reference to the registered trademark GOOGLE[i].
2. Complainant has used the term GOOGLE PLAY since March 2012 in relation to an online store where, inter alia, games can be downloaded.
3. The disputed domain name was registered on February 26, 2013.
4. The domain name resolves to a website that offers downloadable games and applications.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for GOOGLE, the Panel is satisfied that it has trademark rights in that mark.[ii]
Complainant also claims common law trademark rights in GOOGLE PLAY by reason of secondary meaning acquired through use. The term GOOGLE PLAY has only been used for a little over 12 months however the online store has been immensely popular[iii] and on the basis of the information provided Panel finds that Complainant also has trademark rights in GOOGLE PLAY.
The critical question in these proceedings is whether the disputed domain name is confusingly similar to one, other or both of Complainant’s trademarks. For the purposes of that assessment both the non-distinctive gTLD, “.com” and the hyphenation of the domain name can be disregarded[iv] and so the comparisons reduce to (a) GOOGLE with PLAY GOGLES, and (b) GOOGLE PLAY with PLAY GOGLES.
Panel is not persuaded by Complainant’s submissions that the terms are confusingly similar. Complainant argues, in short, (i) that the word “play” is descriptive in the context of the goods; (ii) that GOGLE is an obvious misspelling of GOOGLE, and (iii) that merely inverting the terms of a trademark is insufficient to avoid confusing similarity.
What that submission awkwardly sidesteps is the fact that, in English, the word “goggles” (always used in the plural) is a well understood common noun[v] and that GOGLES is (1) a degree of misspelling closer to “goggles” than it is to GOOGLE; (2) is phonetically identical to “goggles”, and (3) when prefaced by the word “play” is given semantic sense and meaning which is altogether absent if GOGLES is interpreted as GOOGLE. This is not a comparison like the one in Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) where it was found that there was no reason to distinguish between <tourism-toronto.com> and TORONTO TOURISM.
For the sake of completeness Panel notes here the evidence relative to the other elements of the Policy (legitimate interests and bad faith) which, given the February 2013 registration date of the domain name and the content of the resolving website, more than suggest that Respondent targeted Complainant’s trademark. Nevertheless, it has been remarked more than once in former UDRP decisions that a complainant bears an essential obligation to prove confusing similarity under paragraph 4(a)(i) of the Policy independently of other factors.
Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required.[vi]
No findings required.[vii]
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons, Panelist
Dated: May 17, 2013
[i] For example, United States Patent & Trademark Office (“USPTO”) Reg. No. 2,954,071 registered on May 24, 2005 for the word mark GOOGLE.
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also, Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[iii] Complainant states that by September 2012 the GOOGLE PLAY store had already seen 25 billion downloads and that currently the store offers over 600,000 games and applications. Whilst these seem remarkable figures, in the absence of any contest by Respondent, Panel accepts the veracity of the claims. 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.”)).
[iv] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) finding that hyphenation and top-level domains are irrelevant for purposes of the Policy in making the comparison.
[v] Being protective eyewear.
[vi] See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
[vii] Ibid.
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