Google Inc. v.
Mosspot
Claim Number: FA0508000547780
PARTIES
Complainant is Google Inc. (“Complainant”), represented by Rose A. Hagan, 1600 Amphitheatre Parkway, Mountain View, CA 94043. Respondent is Mosspot (“Respondent”), 6059 Linneal Beach Drive, Apopka, FL 32703.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <googletalk.com>, registered with Personalnames.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz, Sandra Franklin, and Diane Cabell as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 30, 2005.
On August 25, 2005, Personalnames confirmed by e-mail to the National Arbitration Forum that the <googletalk.com> domain name is registered with Personalnames and that the Respondent is the current registrant of the name. Personalnames has verified that Respondent is bound by the Personalnames registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2005 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@googletalk.com by e-mail.
A timely Response was received and determined to be complete on October 5, 2005.
On
October 20, 2005, pursuant to Respondent’s request to have the dispute decided
by a three-member Panel, the
National Arbitration Forum appointed Hon. Nelson A. Diaz, Sandra Franklin, and
Diane Cabell as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of a federal trademark registration for the mark GOOGLE, as well as numerous other “Google” nominative marks, for use in connection with computer and Internet products and services. Complainant asserts that it has rights in the domain name <googletalk.com> and that the domain name <googletalk.com> is confusingly similar to Complainant’s GOOGLE Mark. Complainant further asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, nor is Respondent commonly known by the domain name. Finally, Complainant asserts that the disputed domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent asserts that the domain name <googletalk.com> is not confusingly similar to Complainant’s Mark and that Respondent has rights and legitimate interests in the domain name <googletalk.com>. Further, Respondent asserts that Respondent is using the domain name <googletalk.com> in connection with a bona fide offering of goods and services and denies any bad faith in registration or use.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Based on the uncontroverted evidence submitted by Complainant, the Panel finds that Complainant has rights in the GOOGLE mark that arise from both the use in commerce and the registration of the mark with the United States Patent and Trademark Office (“USPTO”). See U.S. Reg. No. 2,884,502 issued September 14, 2004, filed September 16, 1998. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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 [or] have acquired secondary meaning”).
The Panel also finds that the
addition of the generic term “talk” is insufficient to distinguish Respondent’s
domain name from Complainant’s GOOGLE mark.
See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Based on its filings, it is clear that Respondent misunderstands the nature and scope of the protection afforded by US trademark law. Trademark rights arise from both Federal registration of a mark and actual use of a mark in commerce. Further, trademark protection goes beyond merely banning another’s use of the identical term, it also prohibits another’s commercial use of any confusingly similar term. Here, Respondent not only registered a confusingly similar term, but also used it to host a website that looks very much like a directory, which is a service similar to that provided by Google.
Complainant proffered evidence that Respondent is using the confusingly similar <googletalk.com> domain name to divert Internet users to Respondent’s own commercial website. Furthermore, Complainant contends that Respondent is not commonly known by the <googletalk.com> domain name, as Respondent operates under the name “Mosspot.” Both of these contentions, if true, belie Respondent’s claim of rights and legitimate interests in the domain name. See Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (“Respondent 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.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Complainant’s proffered evidence satisfy the burden of making a prima facie showing, thus shifting the burden to Respondent to offer evidence of rights of legitimate interests in the domain name <googletalk.com>.
Respondent, however, has not rebutted
Complainant’s evidence; indeed the evidence proffered by Respondent
substantiates Complainant’s claim.
Respondent’s mere allegation that he intended to use the domain name <googletalk.com> to market child
care products, with no evidence to substantiate Respondent’s claim is not
persuasive. The Panel finds that such
diversionary use is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. 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).”); see also Am. Online,
Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept.
26, 2003) (“Respondent's registration and use of the <gayaol.com>
domain name with the intent to divert Internet users to Respondent's website
suggests that Respondent has no rights to or legitimate interests in the
disputed domain name pursuant to Policy Paragraph 4(a)(ii).”). Based on the foregoing, the Panel finds that Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c).
Complainant contends that Respondent is using the <googletalk.com> domain name to divert Internet users to Respondent’s website for its own commercial gain. Complainant further asserts that such commercial use will likely cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with Respondent’s disputed domain name. Finally, Complainant contends that Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the GOOGLE mark due to Complainant’s registration with the USPTO. Moreover, due to Respondent’s inclusion of Complainant’s GOOGLE toolbar on the website, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the registered mark. The Panel finds that Respondent’s registration of the confusingly similar domain name with actual knowledge of Complainant’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
In response, Respondent first contends that the good faith registration of the prior registrant of the domain name <googletalk.com> somehow obviates any bad faith on Respondent’s part. Regardless of the registration purpose of any previous holder of this domain name, the Panel is entitled to consider Respondent’s intentions at the time of Respondent’s registration because that is itself a new registration. Additionally, Respondent asserts that his own registration was in good faith. Although Respondent claims that he intended to use the website to market products relating to child care (and selected the name in reference to a familiar cartoon character, Barney Google), this argument simply is not credible. No evidence was presented that this website was ever used or developed for that purpose. Instead, according to Respondent’s own financial documentation, it appears to have been put to use rather quickly to earn income from referrer hits. Respondent proffered no evidence to show that these hits were based on anything other than the renown of the Google name. Lastly, while Respondent indicated that he owns multiple domain names, Respondent did not provide any evidence that he runs a bona fide domain name reseller business that registers domain names in good faith without intent to trade on existing marks. The Panel finds that Respondent’s assertions of good faith are not credible and that Respondent registered the domain name with the intention of trading on Complainant’s good will. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Considering the undisputed credible evidence regarding Respondent’s registration and use of the domain name, the Panel finds that Respondent’s registration and use constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <googletalk.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Hon. Nelson A. Diaz, Sandra Franklin, and Diane Cabell,
Panelists
Dated: November 3, 2005
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