Google Inc. v. TOMARBarbaros / RH+
Claim Number: FA1510001643761
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is TOMARBarbaros / RH+ (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwordspartner.com>, registered with PlanetDomain Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2015; the Forum received payment on October 23, 2015.
On October 27, 2015, PlanetDomain Pty Ltd confirmed by e-mail to the Forum that the <adwordspartner.com> domain name is registered with PlanetDomain Pty Ltd and that Respondent is the current registrant of the name. PlanetDomain Pty Ltd has verified that Respondent is bound by the PlanetDomain Pty Ltd 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 October 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 2015 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@adwordspartner.com. Also on October 28, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Policy ¶ 4(a)(i)
Complainant has rights in the ADWORDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,794,616, registered on December 16, 2003). Respondent’s <adwordspartner.com> domain name is confusingly similar to the ADWORDS mark because it contains the mark, along with the generic word “partner” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <adwordspartner.com> domain name because there is no evidence on record to suggest being so known and because Complainant has not authorized Respondent to use the ADWORDS mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website, which currently resolves to an inactive page, was previously used in a manner designed to imply an association with Complainant, so that Respondent could sell Internet users a competitive service.
Policy ¶ 4(a)(iii)
Respondent uses the <adwordspartner.com> domain name in bad faith because the resolving website, which currently resolves to an inactive page, has previously been used to foster an association with Complainant so that Respondent could profit through the sale of services in competition with Complainant. Respondent registered the <adwordspartner.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the ADWORDS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc. of Mountain View, CA, USA. Complainant was established in 1997 and has offered a broad array of technological products and services since that time under its GOOGLE mark. Google is also the owner of numerous domestic and international registrations for the mark ADWORDS and variations thereon constituting the family of AdWords marks. Since 2000 Google has continuously used its ADWORDS mark in connection with its online keyword search and advertising service.
Respondent is TOMARBarbaros / RH+, of Kocaeli, Turkey. Respondent’s registrar’s address is listed as Sydney, Australia. The Panel notes that the <adwordspartner.com> domain name was created on or about March 21, 2010.
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 alleges it has rights in the ADWORDS mark through its registration with the USPTO (Reg. No. 2,794,616, registered on December 16, 2003). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel here finds that Complainant has rights in the ADWORDS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <adwordspartner.com> domain name is confusingly similar to Complainant’s ADWORDS mark because it contains the mark, along with the word “partner” and the gTLD “.com.” Complainant argues that “partner” is a generic term, and, therefore, of no consequence to Policy ¶ 4(a)(i). Prior panels have found that a gTLD and generic term are not enough to distinguish a domain name and mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel here finds that Respondent’s <adwordspartner.com> domain name is confusingly similar to Complainant’s ADWORDS mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
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), 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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <adwordspartner.com> domain name because there is no evidence on record to suggest being so known and because Complainant has not authorized Respondent to use the ADWORDS mark. The Panel notes that the WHOIS information lists “TOMARBarbaros” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Previous panels have found a similar lack of evidence sufficient to show that a respondent is not commonly known by a domain name under 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). The Panel here finds that Respondent is not commonly known by the <adwordspartner.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <adwordspartner.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website was previously used in a manner designed to imply an association with Complainant, so that Respondent could sell Internet users a competitive service. Past panels have found similar uses of disputed domains to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Complainant’s evidence shows such use by Respondent, and to that extent supports the conclusion that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent fails to use the domain to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <adwordspartner.com> domain name currently resolves to an inactive website. Previous panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent’s inactive holding evidences a failure to use the <adwordspartner.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses the <adwordspartner.com> domain name in bad faith because the resolving website has previously been used so that Respondent could profit through the sale of services in competition with Complainant. Prior panels have found that competitive sales is a disruptive use under Policy ¶ 4(b)(iii), thereby showing bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent uses the <adwordspartner.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <adwordspartner.com> domain name in bad faith because the resolving website has previously been used to foster an association with Complainant so that Respondent could profit. Prior panels have found that similar uses show bad faith use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 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). The Panel here finds that Respondent registered and uses the <adwordspartner.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent’s current use of the <adwordspartner.com> domain name constitutes an inactive holding, which shows bad faith. Prior panels have found a failure to make an active use of a domain name to show bad faith use under 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). The Panel here finds that Respondent uses the <adwordspartner.com> domain in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <adwordspartner.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 4, 2015
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