Google Inc. v. Amany Farouk
Claim Number: FA1308001513933
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Farouk, Amany (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwordgoogle.net>, registered with NETWORK SOLUTIONS, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2013; the National Arbitration Forum received payment on August 9, 2013.
On August 9, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <adwordgoogle.net> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 August 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@adwordgoogle.net. Also on August 14, 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 September 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 allegations:
a. Complainant’s mark:
i. Complainant owns the GOOGLE mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,806,075, registered January 20, 2004).
ii. Complainant owns the GOOGLE mark through its trademark registrations with Egypt’s Trademarks and Industrial Designs Office (“TIDO”) (e.g., Reg. No. 181,503, registered July 10, 2007).
iii. Complainant owns the ADWORDS mark through its trademark registration with the USPTO (Reg. No. 2,794,616, registered December 16, 2003).
iv. Complainant owns the ADWORDS mark through its trademark registration with Egypt’s TIDO (Reg. No. 181,507, registered June 27, 2007).
v. Since the creation of the GOOGLE name and company in 1997, Complainant has been a provider of Internet search engine services, as well as Internet-related products and services.
vi. In October 2000, Complainant launched an online advertising service under the name ADWORDS. The service is a form of “pay-per-click” search engine marketing. Complainant uses the marks ADWORDS and GOOGLE in connection with the service. Complainant’s ADWORDS service now serves at least 190 countries, and at least 1 million advertisers use the service.
vii. Complainant has garnered significant notoriety in the GOOGLE and ADWORDS marks worldwide.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <adwordgoogle.net> domain name is confusingly similar to the GOOGLE mark as the domain name fully incorporates the GOOGLE mark, adding the term “adword”, and the generic top-level domain (“gTLD”) “.net”. The addition of the term “adword” increases the confusing similarity of the disputed domain name because the term is a reference to the ADWORDS mark, which Complainant uses to provide online marketing services. In fact, Respondent has used both the GOOGLE and ADWORDS marks, merely omitting the letter “s” from ADWORDS, which does not sufficiently distinguish the domain name from the marks.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known as the disputed domain name or any name containing any of Complainant’s marks. The WHOIS record identifies “Amany Farouk” as the registrant of the domain name. Further, Respondent is not affiliated with Complainant, and Complainant has not authorized Respondent to register or use the domain name.
2. Respondent is not making a bona fide offering of goods or services in connection with the domain name or a legitimate noncommercial or fair use of the domain name. The domain name resolves to a website for Voda Tech, where Voda Tech promotes the sale of its own “google adwords” package and search engine marketing services. Complainant asserts that Respondent’s offer to sell Complainant’s goods does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Further, Voda Tech represents that users of the package will “get at least 1500 (clicks) [from] potential customers from Egypt”. See Annex 13. As there is no way to guarantee a certain number of clicks, Voda Tech is falsely advertising the nature of its “google adwords” package, or engaging in a “click-fraud” scheme to generate the number of clicks it has guaranteed.
iii. Policy ¶ 4(a)(iii)
1. Bad faith registration and use of the disputed domain name is evidenced by Respondent’s use of the domain name to offer search engine marketing optimization services that compete with Complainant’s comparable service of providing tips on use and selection of internet key words.
2. Respondent’s use of the domain name capitalizes on the goodwill of the GOOGLE mark as it attracts consumers to Respondent’s website for Respondent’s own commercial gain. Such use constitutes bad faith.
3. Respondent had actual and at least constructive knowledge of Complainant’s rights in the GOOGLE mark given the unique qualities and fame of the mark, and the reference to the GOOGLE ADWORDS service on the resolving page. Such knowledge at the time of registration reflects Respondent’s bad faith registration.
4. The resolving website misrepresents that users of Voda Tech’s “google adwords” package will get a certain number of clicks, when such a guarantee is not possible. The representation suggests either false advertising, or that Voda Tech is engaging in a type of “click-fraud” in order to generate the number of clicks promised. Such use is further evidence of Respondent’s bad faith.
c. The disputed domain name was registered on November 8, 2012. See Complainant’s Annex 4.
B. The Respondent did not submit a Response.
1. Respondent’s <adwordgoogle.net> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <adwordgoogle.net> domain name.
3. Respondent registered or used the <adwordgoogle.net> domain name in bad faith.
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 claims to own the GOOGLE mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,806,075, registered January 20, 2004), and with Egypt’s TIDO (e.g., Reg. No. 181,503, registered July 10, 2007). See Complainant’s Annexes 11 and 12. Complainant also claims to own the ADWORDS mark through its trademark registrations with the USPTO (Reg. No. 2,794,616, registered December 16, 2003), and with Egypt’s TIDO (Reg. No. 181,507, registered June 27, 2007). See Complainant’s Annexes 11 and 12. The Panel notes that Respondent resides in Egypt. As Complainant has registered the GOOGLE and ADWORDS marks with the USPTO, Egypt’s TIDO, and numerous trademark agencies worldwide, the Panel finds that Complainant has established rights in the marks pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that the <adwordgoogle.net> domain name is confusingly similar to the GOOGLE mark as the domain name fully incorporates the GOOGLE mark, adding the term “adword”, and the gTLD “.net”. Complainant urges that the addition of the term “adword” actually increases the confusing similarity of the disputed domain name because the term is a reference to Complainant’s ADWORDS mark, which Complainant uses to provide online marketing services. Complainant asserts that Respondent has combined the terms of the GOOGLE and ADWORDS mark, omitting the letter “s”, which does not sufficiently distinguish the domain name from the marks. Previous panels have determined that combining multiple marks belonging to the complainant is not sufficient the differentiate the resulting domain name from the marks. For example, in Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008), the panel held that the <hotjobsyahoo.com> domain name was confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark. Similarly, prior panels have determined that the addition of a term that relates to the complainant’s business does not mitigate confusing similarity. See 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). Additionally, panels have not considered the omission of the letter “s” from the mark to constitute a change sufficient to differentiate the domain name from the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Further, past panels have consistently found that the addition of a gTLD, such as “.net”, is irrelevant for purposes of Policy ¶ 4(a)(i) because top-level domains are a required element of any domain name. Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <adwordgoogle.net> domain name is confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
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 asserts that Respondent is not commonly known as the disputed domain name or any name containing any of Complainant’s marks. Complainant notes that the WHOIS record identifies “Amany Farouk” as the registrant of the domain name. Further, Complainant contends that Respondent is not affiliated with Complainant, and Complainant has not authorized Respondent to register or use the domain name. The Panel recalls that Respondent did not submit a Response to refute these contentions made by Complainant. The Panel determines that the information in the record does not suggest that Respondent is commonly known by the <adwordgoogle.net> domain name, and therefore, the Panel finds that Respondent is not commonly known by the disputed domain pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant contends that the domain name resolves to a website for Voda Tech, where Voda Tech promotes the sale of its own “google adwords” package and search engine marketing services. Complainant asserts that Respondent’s offer to sell Complainant’s goods does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Further, Complainant claims that Voda Tech represents that users of the “google adwords” package will “get at least 1500 (clicks) [from] potential customers from Egypt”. See Annex 13 (screenshot of the resolving webpage). Complainant asserts that there is no way to guarantee a certain number of clicks using the service, and therefore Voda Tech is either falsely advertising the nature of its “google adwords” package, or engaging in a “click-fraud” scheme to generate the number of clicks it has guaranteed. Previous panels have been persuaded by such arguments in comparable circumstances. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Complainant argues that bad faith registration and use of the disputed domain name is evidenced by Respondent’s use of the domain name to offer search engine marketing optimization services that compete with Complainant’s comparable service of providing tips on use and selection of internet key words. The Panel notes that Complainant includes screenshots of the resolving website and reachable pages in Annex 13, which reveal that Voda Tech purports to be an online marketing company that provides marketing services and guides advertising campaigns. The screenshots also show that Voda Tech offers a “google adwords Stat package” for 3000 L.E (Egyptian pounds). Previous panels have found evidence of bad faith disruption where the respondent offers the complainant’s goods or services for sale through the disputed domain name, where the respondent also offers competing services. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Consistent with precedent, the Panel finds evidence of bad faith disruption where Respondent is using the domain name to sell Complainant’s goods and offer competing services pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent’s use of the domain name capitalizes on the goodwill of the GOOGLE mark as it attracts consumers to Respondent’s website for Respondent’s own commercial gain. Complainant argues that such use constitutes bad faith. Previous panels have found evidence of bad faith where the respondent sells complainant’s products for the respondent’s own benefit. In a comparable case, the panel in Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002), found that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv).” The Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent relies on Complainant’s marks, both in the domain name and on the resolving page, to attract from Internet traffic and commercially benefit.
Complainant also contends that Respondent had actual and at least constructive knowledge of Complainant’s rights in the GOOGLE mark given the unique qualities and fame of the mark, and the reference to the GOOGLE ADWORDS service on the resolving page. Such knowledge at the time of registration, Complainant argues, reflects Respondent’s bad faith registration. Previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith; however the Panel infers that Respondent had actual knowledge of Complainant's mark and rights given the fame of the GOOGLE mark and that fact that the GOOGLE and ADWORDS marks appear in the domain name and on the resolving pages. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). As such, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that the resolving website misrepresents that users of Voda Tech’s “google adwords” package will get a certain number of clicks, when such a guarantee is not possible. Further, Complainant asserts that the representation suggests either false advertising, or that Voda Tech is engaging in a type of “click-fraud” in order to generate the number of clicks promised. Complainant claims that such use is additional evidence of Respondent’s bad faith. Panels have consistently found evidence of bad faith where the respondent’s use of the domain name reaches illegal and fraudulent activity. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii), as Respondent either misrepresents the “google adwords” package, or engages in “click-fraud” in order to ensure the minimum number of clicks promised.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adwordgoogle.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 26, 2013
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