Google Inc. v. Jeannette Negron
Claim Number: FA1010001354125
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia of Fenwick & West LLP, California, USA. Respondent is Jeannette Negron (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <help-checkout-google.com>, registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 22, 2010.
On October 25, 2010, CSL Computer Service Langenbach GmbH d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <help-checkout-google.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com and that Respondent is the current registrant of the names. CSL Computer Service Langenbach GmbH d/b/a Joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a Joker.com 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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2010 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@help-checkout-google.com. Also on October 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <help-checkout-google.com> domain name is confusingly similar to Complainant’s GOOGLE CHECKOUT mark.
2. Respondent does not have any rights or legitimate interests in the <help-checkout-google.com> domain name.
3. Respondent registered and used the <help-checkout-google.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., owns and operates the GOOGLE search engine and numerous other Internet related products. Complainant registered the GOOGLE CHECKOUT mark on December 15, 2009 with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,725,612 issued December 15, 2009).
Respondent, Jeannette Negron, registered the disputed domain name, <help-checkout-google.com>, on August 30, 2010. The website resolves to a page that imitates the GOOGLE site and purports to be a help page for GOOGLE CHECKOUT users. The page incorporates the GOOGLE mark as well as reproduces the look and feel of the GOOGLE site.
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."
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.”).
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 alleges it has sufficient rights to pursue this claim and evidences these rights by providing a copy of the United States Patent and Trademark (“USPTO”) registration of the GOOGLE CHECKOUT mark (Reg. No. 3,725,612 issued December 15, 2009). The Panel finds this evidence sufficient under Policy ¶ 4(a)(i). Previous panels have held that registration with a federal authority establishes the necessary rights to pursue a domain name transfer claim. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The Panel finds that the disputed domain name, <help-checkout-google.com>, is confusingly similar to GOOGLE CHECKOUT. The few minor difference between the mark and the domain name fail to distinguish the domain name from the mark. Each difference will be discussed below.
First, the domain name wholly incorporates the mark in a transposed form. The GOOGLE CHECKOUT mark is merely transposed into “checkout-google.” Previous Panels have found that the reordering of words fails to create a new and distinguished mark. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”); see also Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL). Even in its transposed form, the mark is wholly incorporated. The Panel in Am. Online, Inc. v. garybush co uk held that a wholly incorporated mark, even with minor additions, can be insufficient to distinguish a domain name. See Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”).
The Panel finds that the addition of the generic word “help” is in fact a minor addition that does nothing to distinguish the domain name from the mark. Previous panels have also held that similar additions of generic words fail to distinguish domain names from established trademarks. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
The last three, and most insignificant, alterations also fail to create a new mark. The removal of a space and the addition of a hyphen and a generic-top-level domain (“gTLD”) can or must be used to address the limitations inherent in a domain name. A gTLD must be used in a domain name and is therefore irrelevant to the confusingly similar analysis. The hyphen is also irrelevant because it often fills the role of a space. Spaces cannot be used in a domain name and often a hyphen is used in place of a space. Since such alterations are necessary and offer little to distinguish a domain name from a mark they fail to distinguish the disputed domain name. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). For the above reasons, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <help-checkout-google.com> domain name is confusingly similar to Complainant’s GOOGLE CHECKOUT mark.
The Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <help-checkout-google.com> domain name. Once Complainant makes a prima facie case the burden of proof shifts to Respondent. Respondent must prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The first indication that Respondent has no rights or legitimate interests is that Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS information, which identifies the domain name registrant as “Jeannette Negron,” does not match the domain name. Respondent has also not provided any evidence indicating otherwise. This leads the Panel to conclude that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent also appears to be diverting users from Complainant’s business. Respondent’s website resolves to a page that purports to be a help page for Complaint’s GOOGLE CHECKOUT service. Complaint has received complaints that indicate that the page is in fact being used to advance a scam that attracts users to a third party escrow company not sponsored by Complainant. Without contradicting evidence from Respondent, the Panel finds this to be diverting users for commercial gain. Such actions indicate a lack of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and no presence of a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant also alleges that Respondent is attempting to pass itself of as Complainant through its use of the disputed domain name and webpage. Respondent’s domain name resolves to a site that looks remarkably like the Complainant’s. The Complainant’s logo, header, and sidebar are used. These uses create a sense of affiliation with Complainant that does not exist. The Panel finds that this is an impermissible attempt by Respondent to pass itself off as Complainant and evidences a lack of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); 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 finds Policy ¶ 4(a)(ii) is met.
The Panel finds that Respondent is using a domain name confusingly similar to Complainant’s mark to disrupt Complainant’s business by directly competing with Complainant. Respondent uses <help-checkout-google.com> to attract Internet users seeking the GOOGLE CHECKOUT mark. Respondent’s Internet escrow service, whether or not a scam, directly competes with GOOGLE CHECKOUT. Respondent is using the confusingly similar domain name to advance this “business.” This Panel finds this to be a disruption pursuant Policy ¶ 4(b)(iii) and an indication of bad faith. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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 finds that Respondent is also using the confusingly similar domain name for comercial gain. The Panel presumes that Respondent benefits in some way through the use of the website resolving from the confusingly similar disputed domain name. The Panel infers that Internet users interested in Complainant would likely become confused as to Complaiant’s affiliation with the disputed domain name. The Panel concludes that Respondent’s use of the confusingly similar disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”)
As noted above, Respondent is using the disputed domain name to pass off as affiliated with Complainant when there is no actual affiliation or sponsorship. While such an attempt evidence a lack of a bona fide offering of goods or services, it also evidences bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”)
The Panel finds Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <help-checkout-google.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 2, 2010
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