Google, Inc. v. DktBot.org
Claim Number: FA0406000286993
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.
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.
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 email@example.com, firstname.lastname@example.org, and email@example.com 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).
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
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.
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.”
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
Dated: August 4, 2004
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