national arbitration forum

 

DECISION

 

Google Inc. v. Jan Sammut

Claim Number: FA1307001510119

PARTIES

Complainant is Google, Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is Jan Sammut (“Respondent”), Malta.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buygoogleglassonline.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Judge Carolyn Johnson and Judge Daniel Banks as Panelists and David S. Safran as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 17, 2013.

 

On July 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <buygoogleglassonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@buygoogleglassonline.com.  Also on July 19, 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.

 

A timely Response was received and determined to be complete on August 6, 2013.

 

Complainant filed an Additional Submission, which was received on August 11, 2013, and determined to be compliant on August 12, 2013.

 

On September 6, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Carolyn Johnson and Judge Daniel Banks as Panelists and David S. Safran as Chair.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant contends that it uses the GOOGLE mark to provide an array of web-based services and has registered the GOOGLE mark with many national trademark registrars. Complainant also contends that it announced its GOOGLE GLASS wearable computer device product in April of 2012 and GOOGLE GLASS was registered with OHIM on January 22, 2013.

 

Complainant also asserts that the domain name merely adds the generic terms “buy” and “online” to the GOOGLE GLASS mark, along with the generic top-level domain (“gTLD”) “.com,” that elimination of the mark’s spacing is irrelevant and Respondent is not known by the <buygoogleglassonline.com> domain name. Still further Complainant contends that Respondent is not authorized to use Complainant’s marks in any way.

 

Still further Complainant contends that Respondent uses the <buygoogleglassonline.com> domain name to falsely advertise that Internet users may pre-order GOOGLE GLASS products through the domain name’s online store and that Complainant is not offering any preorders of its GOOGLE GLASS product, so that Respondent is essentially seeking out the personal information and financial information of Internet users who believe that they are making legitimate preorders for GOOGLE GLASS products which evidences a bad faith attempt to disrupt Complainant’s business and an intent to confuse Internet users into believing that they will be preordering legitimate GOOGLE GLASS products as a scheme to phish personal and financial information.

Furthermore, Complainant contends that Respondent had actual knowledge of Complainant’s rights in its marks, based on explicit reference of Complainant’s marks.

 

B. Respondent

Respondent contends that the <buygoogleglassonline.com> domain name is intended to be descriptive of reviews seen on the website and to provide positive information and publicity for GOOGLE GLASS products.

 

 

C. Additional Submissions

Complaint contends that he domain name is not a series of generic terms but rather is comprised of the GOOGLE mark and GOOGLE GLASS mark which are registered trademarks. Complaint asserts that Respondent does not contest the fact that it requests personal information, promotes hyperlink advertisements, and generally seeks a commercial gain through its use of this website. Still further, Complainant asserts that Respondent cannot avoid being found to have acted in bad faith merely because it offered positive information about GOOGLE GLASS products because Internet users are still confused as to the availability of GOOGLE GLASS products through this domain name.

 

FINDINGS

GOOGLE is a notoriously well known trademark and the forthcoming release of the GOOGLE GLASS wearable computer has been extensively publicized to such an extent that Respondent would have had to have known of it and could not have created the site to which the domain resolves without such knowledge.

Respondent is not known by the <buygoogleglassonline.com> domain name. The domain name merely adds the generic terms “buy” and “online” to the GOOGLE GLASS mark, along with the generic top-level domain (“gTLD”) “.com.” Respondent uses the <buygoogleglassonline.com> domain name to falsely advertise that Internet users may pre-order GOOGLE GLASS products through the domain name’s online store. Respondent’s use of the domain name is not a “fair use.”

 

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.

 

Identical and/or Confusingly Similar

 

Complainant states that it announced its GOOGLE GLASS product in April 2012. Complainant notes that it has obtained registration rights for the GOOGLE GLASS with the OHIM (Reg. No. 11,173,838 registered January 22, 2013 (filed March 14, 2012). In Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel readily disposed of concerns that a trademark need be registered in the same country that a respondent operates—this is simply not the case according to that panel. The Panel therefore agrees that the OHIM trademark registration satisfactorily evidence Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Direct Mktg. Co. S.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)).

 

Complainant notes that the <buygoogleglassonline.com> domain name merely adds the generic terms “buy” and “online” to the GOOGLE GLASS mark, along with the gTLD “.com.” Complainant states that the elimination of the mark’s spacing is irrelevant. The Panel agrees that both the deletion of spacing and the introduction of a gTLD are irrelevant under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also agrees that the generic terms “buy” and “online” do nothing to distinguish this domain name from the GOOGLE GLASS mark, as these terms are generic. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel thus concludes that the <buygoogleglassonline.com> domain name is confusingly similar to the GOOGLE GLASS mark under Policy ¶ 4(a)(i).

 

While Respondent contends that the <buygoogleglassonline.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

The Panel recognizes that 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.”).

 

Complainant argues that Respondent is not known by the <buygoogleglassonline.com> domain name. Complainant attests that Respondent is not authorized to use Complainant’s marks in any way. The Panel agrees that Respondent is not known by the <buygoogleglassonline.com> domain name under Policy ¶ 4(c)(ii), as Respondent provides nothing in the Response to suggest otherwise. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Complainant contends that Respondent uses the <buygoogleglassonline.com> domain name to falsely advertise that Internet users may pre-order GOOGLE GLASS products through the domain name’s online store. Complainant notes that it is not offering any preorders of its GOOGLE GLASS product. The Panel notes that the domain name resolves to a website wherein Respondent promotes the GOOGLE GLASS product, and includes a hyperlink where Internet users may allegedly pre-order GOOGLE GLASS products. See Complainant’s Ex. 16. Complainant adds in its Additional Submission that Respondent does not deny that it seeks a commercial gain through its operation of the domain name. The Panel agrees that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in purporting to offer information concerning Complainant’s goods in order to obtain a “pre-order” fee. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).

 

Complainant also argues that Respondent is essentially seeking out the personal information and financial information of Internet users who believe that they are making legitimate pre-orders for GOOGLE GLASS products. The Panel notes that there is a button on the <buygoogleglassonline.com> domain name’s website that allows Internet users to pre-order Complainant’s GOOGLE GLASS products, but there is no evidence as to what happens when Internet users click on this button. See Complainant’s Ex. 16. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel found that the respondent could not claim to have any Policy ¶ 4(a)(ii) rights or legitimate interests in the at-issue domain name when the respondent used the name to persuade Internet users to provide the respondent with their personal information. Given that any “pre-order” would of necessity require submission of at least some contact information, the Panel believes that the website to which the domain resolves serves as a means to phish for personal information so that the Panel concludes that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s false offering of Complainant’s GOOGLE GLASS products evidences an attempt to disrupt Complainant’s business. The Panel notes that the websites associated with the <buygoogleglassonline.com> domain name promote the GOOGLE GLASS product and suggest that the Internet user can pre-order GOOGLE GLASS products through the domain name’s websites. In Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001), the panel found that a respondent acted in bad faith under Policy ¶ 4(b)(iii) by registering a domain name for purposes of suggesting that the respondent was authorized or licensed to sell a complainant’s goods, when in fact respondent had no such authorization. The Panel here likewise agrees that Respondent has engaged in a Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business by holding itself out as an authorized source of information and commercial pre-orders for Complainant’s goods.

 

Complainant also argues that Respondent intends to confuse Internet users into believing that they will be preordering legitimate GOOGLE GLASS products. Complainant argues that Respondent benefits by obtaining personal and financial information from confused Internet users. The Panel again notes that the domain name’s website is filled with discussions of GOOGLE GLASS products, discussion boards about the GOOGLE GLASS device, and an option to pre-order the GOOGLE GLASS device. See Complainant’s Ex. 16. The Panel concludes that in these circumstances, there is a likelihood that the Internet user will confuse themselves into believing the content and commercial offerings on this domain name’s website are affiliated with Complainant; thus, the Panel finds Policy ¶ 4(b)(iv) bad faith. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant also argues that Respondent is preying on Internet users in a scheme to phish personal and financial information. The Panel finds bad faith under Policy ¶ 4(a)(iii) since the Panel believes, for the reasons indicated above, that the website to which the domain resolves serves as a means to phish for personal information from Internet users. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

Complainant also claims that Respondent had actual knowledge of Complainant’s rights in its marks, based on explicit reference of Complainant’s marks. Complainant adds that even constructive knowledge of the famous GOOGLE marks is sufficient evidence of bad faith. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and extensive coverage of the Google Glass product, Respondent had actual knowledge of the mark and Complainant's rights. 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).

 

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 <buygoogleglassonline.com> domain name be TRANSFERRED from Respondent to Complainant

                                   

__________________________________________________________________

On behalf of the Panel, David S. Safran, Chair

Judge Carolyn Johnson and Judge Daniel Banks as Panelists

Dated:  September 11, 2013

 

 

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