national arbitration forum

 

DECISION

 

Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS

Claim Number: FA1309001519295

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Maria Fernanda Castellanos Steffens of Brigard & Castro, Columbia.  Respondent is DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <play-google.co>, registered with CCI REG S.A.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 12, 2013; the National Arbitration Forum received payment September 12, 2013.

 

On September 13, 2013, CCI REG S.A. confirmed by e-mail to the National Arbitration Forum that the <play-google.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name.  CCI REG S.A. verified that Respondent is bound by the CCI REG S.A. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@play-google.co.  Also on September 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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

 

Complainant makes the following allegations in this proceeding:

 

Complainant contends it has rights in the GOOGLE mark, used in connection with Internet search services and mobile device technology. Complainant owns registrations for the GOOGLE mark throughout the world, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered January 20, 2004) and the Panamanian trademark authority (e.g., Reg. No. 142,241 registered May 5, 2005).

a)    Respondent’s <play-google.co> domain name is confusingly similar to Complainant’s GOOGLE mark. The disputed domain name incorporates Complainant’s GOOGLE mark in its entirety.

b)    Respondent does not own any rights to or legitimate interests in the <play-google.co> domain name.

a.    Complainant has not authorized Respondent to use its GOOGLE mark in any way.

b.    Complainant relies on UDRP precedent stating that its GOOGLE mark is so well known that it is difficult to fathom a respondent having legitimate rights or interests in a disputed domain name containing Complainant’s protected mark.

c)    Respondent registered and is using the <play-google.co> domain name in bad faith.

a.    Respondent is not using the disputed domain name to display any content, and malware is being distributed from the resolving website.

b.    Respondent had knowledge of Complainant’s GOOGLE mark prior to registering the <play-google.co> domain name because of the fame of Complainant’s mark.

 

Respondent did not submit a respondent in this proceeding.

 

The Panel notes that Respondent registered the disputed domain name May 25, 2013.

 

FINDINGS

 

Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.

 

Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.

 

The disputed domain name is confusingly similar to Complainant’s mark.

 

Respondent registered and used the disputed domain name in bad faith.

 

 

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 Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar

 

Complainant contends it has rights in the GOOGLE mark, used in connection with Internet search services and mobile device technology. Complainant states that it owns registrations for the GOOGLE mark throughout the world, including registrations with the USPTO (e.g., Reg. No. 2,806,075 registered January 20, 2004) and the Panamanian trademark authority (e.g., Reg. No. 142,241 registered May 5, 2005). Registration of a mark with federal trademark authorities establishes rights for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel finds that Complainant established rights in the GOOGLE mark under Policy ¶ 4(a)(i).

 

Complainant next alleges that Respondent’s <play-google.co> domain name is confusingly similar to Complainant’s GOOGLE mark. Complainant states that the disputed domain name incorporates Complainant’s GOOGLE mark in its entirety. The Panel notes that the disputed domain name also includes the descriptive term “play,” a hyphen, and the country code top-level domain (“ccTLD”) “.co.” The Panel finds that addition of a descriptive term does not sufficiently distinguish a disputed domain name from a trademark. See Am. Int’l Group, Inc. v. 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). The Panel also finds that the addition of a country code does not sufficiently distinguish a disputed domain name from a trademark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). Lastly, the Panel finds that the addition of a hyphen is irrelevant to a Policy ¶ 4(a)(i) analysis. 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).”). Therefore, the Panel finds that Respondent’s <play-google.co> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to 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 of proof shifts to Respondent to show it does have such 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 interests 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 contends that Respondent does not own any rights or legitimate interests in the <play-google.co> domain name. Complainant states it has not authorized Respondent to use its GOOGLE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “DOMAIN ADMINISTRATOR” as the domain name registrant. The best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record, authorization to use the trademark, and the record. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Complainant did not authorize Respondent to use the GOOGLE mark, and since the WHOIS information and other evidence on record do not contain evidence of Respondent having any rights or legitimate interests in the domain name containing Complainants mark, the Panel finds that Respondent is not commonly known by the <play-google.co> domain name.

 

Complainant relies on UDRP precedent stating that its GOOGLE mark is so well known that it is difficult to fathom a respondent having legitimate rights or interests in a disputed domain name containing Complainant’s mark.  See Google Inc. v. Mikel M Frieje, FA102609 (Nat. Arb. Forum Jan. 11, 2002) (“[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.”). Other panels have agreed.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). Therefore, given the fame associated with Complainant’s GOOGLE mark, the Panel finds that Respondent does not have legitimate rights or interests in the <play-google.co> domain name under Policy ¶ 4(a)(ii).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant urges that Respondent registered and used and/or passively held the disputed domain name in bad faith.  The Panel looks to the totality of the evidence in make a determination of bad faith and may go beyond the elements listed in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Those illustrations are not meant to be an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel finds bad faith under Policy ¶ 4(a)(ii) because the Panel determines that Complainant’s contentions have merit.

 

Complainant claims Respondent registered and is using the <play-google.co> domain name in bad faith. Complainant states that malware is being distributed from the resolving website. The Panel notes that Complainant has not included screen shots of the resolving website connected to the disputed domain name, but Complainant does list links in its Complaint, contending that Respondent distributes malware. Distributing malware to Internet users using a confusingly similar domain name, presumably for the benefit of the respondent, supports findings of bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1495039 (Nat. Arb. Forum May 30, 2013) (finding that “[r]espondent’s use of the disputed domain name to host malware or to feature competing applications evidences bad faith use and registration under Policy ¶ 4(b)(iv)”). Therefore, the Panel finds that Respondent is distributing malware via the <play-google.co> domain name, and the Panel finds that Respondent’s conduct constitutes bad faith under Policy ¶ 4(b)(iv).   

 

Complainant also claims that Respondent registered and is using the <play-google.co> domain name in bad faith because Respondent does not associate any content with the disputed domain name. The Panel  notes once again that Complainant has not included screen shots of the resolving website connected to the disputed domain name. The Panel nonetheless determines that Respondent has failed to make an active use of the <play-google.co> domain name for the purposes of the Policy, and the Panel finds that such non-use suggests bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Complainant asserts that Respondent had knowledge of Complainant’s GOOGLE mark prior to registering the <play-google.co> domain name because of the fame of Complainant’s mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

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 <play-google.co> domain name be TRANSFERRED from Respondent to Complainant.

 

                                   

Hon. Carolyn Marks Johnson, Panelist

Dated: October 29, 3013.  

 

 

 

 

 

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