Google Inc. v. hitendra aghara / balaji ele
Claim Number: FA1309001519713
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is hitendra aghara / balaji ele (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <g00gle.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2013; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2013.
On September 17, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <g00gle.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 23, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GOOGLE mark. Respondent’s domain name is confusingly similar to Complainant’s GOOGLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <g00gle.us> domain name, and that Respondent registered and uses the 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant states that it operates a highly recognized search engine that maintains one of the world’s largest collections of searchable documents. Complainant alleges that it has registered its GOOGLE mark with various industrial property agencies around the world, including the USPTO (e.g., Reg. No. 2,806,075 registered September 16, 1998) and the OCGPDTI (e.g., Reg. No. 845,041 registered March 12, 1999). A complainant sufficiently establishes its rights in a mark by registering the mark with various industrial property offices around the world. See, e.g., 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). Accordingly, the Panel holds that Complainant has sufficiently established that it owns rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Complainant further contends that the <g00gle.us> domain name is confusingly similar to Complainant’s GOOGLE mark because the domain name merely adds the ccTLD “.us” and replaces the letters “oo” with the numerals “00” (zeros), which are visually nearly identical. A domain name’s addition of a ccTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Furthermore, a domain name’s replacement of the letter “o” with the number “0” does not sufficiently distinguish the domain name from a complainant’s mark. See, e.g., Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). Accordingly, the Panel holds that the <g00gle.us> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant next alleges that Respondent is not commonly known by the disputed domain name or any name containing the GOOGLE mark, because the WHOIS information identifies the registrant of the disputed domain name as “hitendra aghara / balaji ele,” which does not resemble the <g00gle.us> domain name or the GOOGLE mark. A respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii) where there is no evidence in the record, including the WHOIS information, to suggest that the respondent is known by the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In this case the Panel concludes there is no evidence in the record that supports a finding that Respondent is commonly known as <g00gle.us>, and thus holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant alleges that the disputed domain name resolves to a website that provides search engine services that directly compete with those of Complainant, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). A screenshot provided by Complainant shows the website resolving from the disputed domain name, which is titled “Free Mp3 Search Engine” and contains a search box as well as links to various Mp3s. The Panel thus determines that because Complainant claims to use its GOOGLE mark in relation to an Internet search engine, Respondent‘s use of the disputed domain name to offer a “Free Mp3 Search Engine” constitutes competing use. A respondent’s use of a disputed domain name to resolve to a website that offers products that directly compete with the complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii).”). Therefore, the Panel holds that Respondent’s use of the <g00gle.us> domain name is not protected under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the <g00gle.us> domain name targets potentials users of Complainant’s own online search engine and directs them to a competing online search engine, which is disruptive of Complainant’s business and thus demonstrates Respondent’s bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). Based on the uncontradicted evidence in the record, the Panel determines that Respondent is using the disputed domain name in a manner that directly competes with Complainant. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii). Similarly, Respondent has used the <g00gle.us> domain name in order to operate an online service that directly competes with that offered by Complainant. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration or use of the <g00gle.us> domain name pursuant to Policy ¶ 4(b)(iii).
Complainant next argues that visually, the <g00gle.us> domain name is substantially identical to Complainant’s GOOGLE mark, and thus creates a likelihood of confusion among Internet users. Complainant further suggests that Respondent is benefitting from this confusion in the form of increased use of its own competing online search engine and has thus demonstrated bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). In MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found bad faith under UDRP ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark. Here the <g00gle.us> domain name is confusingly similar to Complainant’s GOOGLE mark. The records supports Complainant’s contention that the disputed domain name is being used to host an online commercial search engine that directly competes with Complainant’s online search engine. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant and its GOOGLE mark, given the extreme popularity of the mark, which tends to show Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). Given the extreme notoriety of the GOOGLE mark the Panel concludes that Respondent had actual notice of the mark at the time the domain name was registered, and such actual notice supports a finding of bad faith under Policy ¶ 4(a)(iii). See, e.g., Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity).
Finally, Complainant alleges that the <g00gle.us> domain name is almost visually identical to Complainant’s GOOGLE mark, and thus takes advantage of a common mistake made my Internet users. Complainant argues that Respondent has thus engaged in typosquatting, which is itself evidence of Respondent’s bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii). The Panel agrees. By registering a domain name that merely replaces the letters “oo” with the numbers “00,” which are similarly situated on the “QWERTY” keyboard, Respondent has deliberately created a likelihood that the website resolving from the disputed domain name will be confused for a website that is sponsored by or affiliated with Complainant. Accordingly, the Panel holds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <g00gle.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 5, 2013
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