Google Inc. v. Marcus Kitzmann / Kit Invest SLU
Claim Number: FA1308001514772
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is Marcus Kitzmann / Kit Invest SLU (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleregional.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2013; the National Arbitration Forum received payment on August 16, 2013.
On August 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <googleregional.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 August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@googleregional.com. Also on August 20, 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 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Operating under the GOOGLE mark, Complainant operates a global technology company, founded in 1997, that has become one of the largest and most highly recognized businesses in the world.
Complainant is the most visited search engine in over fifteen countries, and has been consistently honored for its technology and services.
Complainant holds registrations for the GOOGLE service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 2,806,075, registered January 20, 2004).
Complainant owns the <google.com> domain name, in addition to hundreds of other GOOGLE-formative domain names at nearly every top-level country-code.
Respondent resides in the Canary Islands, Spain, and registered the domain name <googleregional.com> on February 12, 2013.
The <googleregional.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The domain name resolves to a website requiring a log-in user name and pass-word, which leads the Internet user to a commercial website in German for a company trading under the “Google Regional” name.
The website mimics the look and feel of Complainant’s official website under the GOOGLE mark, as it replicates the distinctive color scheme and incorporates the term “Regional” in the part of the logo where Complainant identifies its country-specific websites.
The website appears to sell online advertising services to improve ad placement through one of Complainant’s services and to improve website placement in search results by targeting advertising strategies based on geographic location.
Complainant has received complaints from consumers about letters sent from Respondent, which consumers believe to be a scam.
Respondent cannot claim to be commonly known by the domain name, and Re-spondent is not authorized to use the GOOGLE mark in a domain name.
Respondent’s use of the website to offer online advertising services is an attempt to both compete with Complainant and to capitalize financially from the disputed domain name.
Respondent’s employment of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent does not have rights to or legitimate interests in the domain name.
In a blatant attempt to pass itself off as Complainant, Respondent falsely repre-sents to Internet users that it is affiliated with Complainant by using the GOOGLE mark and Complainant’s distinctive color scheme at the resolving website.
Respondent knew of Complainant and its rights in the GOOGLE mark when Re-spondent registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
ii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the GOOGLE service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a UDRP complainant had registered its mark with national trademark authorities, a Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
This is true without regard to whether Complainant acquired rights in its mark by means of registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Spain). See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the core question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the <googleregional.com> domain name is confusingly similar to Complainant’s GOOGLE service mark. The domain name contains the entire GOOGLE mark, with the addition of the term “regional” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in form-ing the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the contested domain name <disneyvacationvillas.com> to be confusingly similar to a UDRP complainant’s DISNEY mark because it incorporated that complainant’s entire mark and merely added two terms to it); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007):
[T]he inclusion of the generic top-level domain ‘.com’ is inconse-quential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <googleregional.com> domain name, and that Complainant has not authorized Respondent to use the GOOGLE service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Marcus Kitzmann / Kit Invest SLU,” which does not resemble the domain name. On this record we conclude that Re-spondent has not been commonly known by the <googleregional.com> domain name so as to have acquired rights to or legitimate interests in it within the mean-ing of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disput-ed domain names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not author-ized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the website resolving from the domain name offers services that are similar to and compete with Com-plainant’s Internet advertising services. In the circumstances here presented, we may comfortably presume that Respondent profits from the operation of the re-solving website. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not con-stitute a bona fide offering of goods and services.
See also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding that a respondent’s use of a disputed domain name to pass itself off as a UDRP complainant in order to advertise and sell unauthorized products of that complainant was 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)).
The Panel therefore finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <googleregional.com> domain name in the manner described in the Complaint disrupts Complainant’s business. This stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), finding that a respondent appropriated a UDRP complainant’s mark in a domain name in order to divert that complainant’s customers to that respondent’s competing business, and that such diversion was evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).
We are likewise convinced by the evidence that Respondent’s employment of a domain name which is confusingly similar to Complainant’s GOOGLE service mark to profit from the confusion of Internet users as to the possibility of Com-plainant’s affiliation with the domain name evidences bad faith registration and use of the domain name as described in Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent engaged in bad faith registration and use by using domain names that were identical or confusingly similar to a UDRP complainant’s mark to redirect users to a website that offered services similar to those offered by that complainant).
Finally under this head of the Policy, we conclude that the evidence establishes that Respondent knew of Complainant and its rights in the GOOGLE service mark when Respondent registered the <googleregional.com> domain name. This is further proof of Respondent’s bad faith in registering the domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, be-cause the link between a UDRP complainant's mark and the content advertised on a respondent's website was obvious, that respondent "must have known about the Complainant's mark when it registered the subject domain name").
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <googleregional.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 23, 2013
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