Google, Inc. v. DktBot.org
Claim Number: FA0406000286993
PARTIES
Complainant
is Google, Inc. (“Complainant”),
represented by Rose A. Hagan of Google, Inc., 1600
Amphitheatre Parkway, Building 41, Mountain View, CA 94043. Respondent is DktBot.org (“Respondent”), Portugalete,
Barcelona, 08014, Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <xgoogle.com>, <xgoogle.net> and <xgoogle.org>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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 (the “Forum”)
electronically June 15, 2004; the Forum received a hard copy of the Complaint
June 16, 2004.
On
June 17, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain names <xgoogle.com>, <xgoogle.net>
and <xgoogle.org> are registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com and that Respondent is the current registrant of the
name. Intercosmos Media Group, Inc.
d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.com registration agreement and has agreed thereby
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
June 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 12,
2004, by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@xgoogle.com, postmaster@xgoogle.net, and
postmaster@xgoogle.org by e-mail.
On July 21, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
The
Forum received a Response that was determined to be complete July 11,
2004. However, Respondent failed to
submit its Response by the deadline set forth in accordance with ICANN Rule
5(a). Moreover, Respondent did not submit a hard copy version of the Response
in accordance with ICANN Rule 5(b). Furthermore, Respondent failed to include
the certification statement required by ICANN Rule 5(b)(viii) and the Response
does not contain a signature in accordance with ICANN Rule 3(b)(viii).
The
Response was not filed in accordance with ICANN rules and was deficient. The
Panel reviewed the Response; however, to determine whether Respondent’s
Response would control the outcome in a ruling on the merits. The Panel
determined that it did not. To that
extent, the Panel accepted the Response. See Six Continents Hotels, Inc. v.
Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that Respondent’s failure to
submit a hard copy of the Response and its failure to include any evidence to
support a finding in its favor placed Respondent in a de facto default
posture, permitting the Panel to draw all appropriate inferences stated in the
Complaint); see also Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb.
29, 2000) (concluding that no weight would be afforded to the facts alleged in
Respondent’s deficient submission, partly because it “did not contain any certification
that the information contained in the e-mail was, ‘to the best of Respondent’s
knowledge complete and accurate’” in accordance with Rule 5(b)(viii)); see
also Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing
not to consider the Response in light of formal deficiencies).
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. Respondent registered three domain names
that contain in its entirety
Complainant’s
GOOGLE mark and are confusingly similar to Complainant’s mark.
2. Respondent has no rights to or legitimate
interest in the domain names containing Complainant’s protected mark.
3. Respondent registered the domain names in
bad faith.
B. Respondent makes the following points in
response:
Respondent
did not address any of the issues or three-pronged burden in Respondent’s email
response.
Respondent’s entire response read as
follows:
As everybody could expect I cannot
legally reply [sic]
this thing.
You
could ready my point of view in Google’s document attached emails. I could say something, but has no sense.
Thanks
for your attention.
FINDINGS
Complainant owns the well-known GOOGLE
mark. Created in
1997, the mark is used for a search engine that has an index of more than 4.28
billion web pages and is utilized for about fifty percent of Internet users’
search needs, according to Complainant.
Google’s website is the number 4 site in the United
States-based Internet property with 65.3 million users in April 2004 alone.
Awards to Google for outstanding technology services are too numerous to list.
Complainant applied for trademark protection
September 16, 1998, and has international trademark rights in its mark.
Respondent registered the <xgoogle.com> domain name
March 27, 2002; the <xgoogle.net> domain name
March 26, 2002; and the <xgoogle.org> domain name
February 13, 2002. Google, Inc.
registered the domain name <google.com> September 15, 1997.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.
Complainant
established in this proceeding with extrinsic proof that it has established
legal and common law rights in the GOOGLE mark through the mark’s registration
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,806,075, issued January 20, 2004) and by continuous use. Furthermore,
Complainant asserts it has established rights in the GOOGLE mark through the
filing of an Intent to Use application with the USPTO (App. No. 75,554,461,
Filing Date September 16, 1998). Complainant also holds trademark registrations
for the GOOGLE mark in numerous countries around the world, including
Argentina, Australia, Brazil, Canada, Chile, China, India, Korea, Mexico,
Norway, Peru, Russia, and Switzerland. Additionally, Complainant claims common
law rights to the mark through its use of the mark in commerce for the past
seven years. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
Respondent
does not address this issue.
Complainant
satisfied the requirements of ICANN Policy ¶ 4(a)(i) by showing “confusing
similarity.”
Complainant
established that it has rights and alleged that Respondent lacks rights and
legitimate interests in the <xgoogle.com>, <xgoogle.net> and <xgoogle.org>
domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly
known by the domain names. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark).
Furthermore, Complainant contends that
Respondent’s use of the GOOGLE mark in conjunction with Respondent’s website,
which offers directory and search services identical to those offered by
Complainant, does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), and does not constitute a noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use
evidences that Respondent lacks rights and legitimate interests in the <xgoogle.com>,
<xgoogle.net> and <xgoogle.org> domain names because
Respondent is using the disputed domain names to compete with Complainant
essentially under Complainant’s own name.
A simple misspelling of Complainant’s mark is not enough to constitute a
bona fide offering or legitimate noncommercial or fair use. See Geoffrey,
Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of
infringing domain names to direct Internet traffic to a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business.”).
Further, the Panel finds that
Respondent’s <xgoogle.com>, <xgoogle.net> and <xgoogle.org>
domain names take advantage of the goodwill associated with Complainant’s mark
and therefore the registration and use of the domain names does not constitute
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and is
not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The
Panel finds that the disputed domain names that Respondent registered are
confusingly similar to Complainant’s mark and Respondent has shown no rights to
or legitimate interests in Complainant’s mark.
Respondent has wrongfully created and used domain names that resolve to
a single, commercial website and take advantage of the goodwill associated with
Complainant’s famous mark. See MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also Bank of Am. Corp. v. Northwest 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).”).
Furthermore,
Complainant asserts that Respondent offered to sell the <xgoogle.com>, <xgoogle.net> and <xgoogle.org>
domain name registrations. Respondent’s willingness to dispose of rights to the
domain names supports finding that Respondent lacks rights to or legitimate
interests in the domain names. See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, Respondent’s apparent
willingness to dispose of its rights in the disputed domain name suggested that
it lacked rights or legitimate interests in the domain name); see also Skipton Bldg. Soc’y v. Colman,
D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where
Respondent offered the infringing domain name for sale and the evidence
suggests that anyone approaching this domain name through the worldwide web
would be "misleadingly" diverted to other sites).
Respondent
did not address this issue.
Complainant
satisfied ICANN Policy ¶ 4(a)(ii) showing that it has rights to and legitimate
interest in its mark and that Respondent has no such rights.
In
addition, Complainant asserts that Respondent’s admission of its knowledge that
it was aware of Complainant and its trademark at the time Respondent registered
the <xgoogle.com>, <xgoogle.net> and <xgoogle.org>
domain names evidences opportunistic bad faith. Thus, the Panel may find that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(a)(iii). See Chanel, Inc. AG
v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that
Respondent's registration and use of the famous CHANEL mark suggests
opportunistic bad faith); see also Harrods Ltd. v. Harrod’s Closet,
D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously
connected with well-known products, its very use by someone with no connection
to these products can evidence opportunistic bad faith); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with
Complainant and its products that the use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”).
Furthermore,
Complainant asserts that Respondent’s actions of offering to sell the <xgoogle.com>,
<xgoogle.net> and <xgoogle.org> domain name
registrations evidence bad faith registration and use pursuant to Policy ¶
4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner"); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3,
2000) (finding bad faith where Respondent offered the domain names for sale).
Respondent
is attempting to compete with Complainant under Complainant’s name. Respondent registered and used the <xgoogle.com>,
<xgoogle.net> and <xgoogle.org> domain names to
disrupt Complainant’s business. Registration and use of domain names primarily
for the purpose of disrupting the business of a competitor evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and Complainant were in the same line of business in
the same market area); see also Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that Respondent registered and used the domain name primarily for the purpose
of disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical to Complainant’s
services under the OPENMAIL mark).
Respondent
does not address this issue.
Complainant
satisfied ICANN Policy ¶ 4(a)(iii) showing “bad faith registration and
use.”
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 <xgoogle.com>,
<xgoogle.net> and <xgoogle.org> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 4, 2004
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