Google Inc. v. Sheridan Simove
Claim Number: FA1210001466711
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Sheridan Simove (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nigeriagoogle.com>, registered with GODADDY.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 11, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <nigeriagoogle.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2012 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@nigeriagoogle.com. Also on October 12, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant alleges:
B. Respondent
Respondent did not submit a response in this proceeding.
1. Complainant has rights in its GOOGLE mark.
2. Respondent’s <nigeriagoogle.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.”).
The Panel notes that Complainant has presented the Panel with its USPTO trademark registrations for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered January 20, 2004). The Panel holds that such registrations are sufficient evidence to establish Complainant’s rights in the GOOGLE mark under Policy ¶ 4(a)(i). See 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 fact that Respondent operates outside of the jurisdiction in which these trademark registrations are held is irrelevant. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that the <nigeriagoogle.com> domain name is confusingly similar to its GOOGLE mark for the purposes of Policy ¶ 4(a)(i). The Panel finds that Respondent’s domain name is comprised of Complainant’s GOOGLE mark, combined with the geographic term “nigeria” and the generic top-level domain (“gTLD”) “.com.” The Pane notes that past panels have agreed that neither the addition of a geographic term nor the addition of a gTLD is sufficient to distinguish a disputed domain name from a Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). The Panel concludes that Respondent’s <nigeriagoogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
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), and 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <nigeriagoogle.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant further asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. The Panel notes that the WHOIS information on record for the disputed domain name indicates that the domain name registrant is a “Sheridan Simove.” Finally, the Panel notes that Respondent has failed to produce a response to this proceeding, leaving nothing in the record that would indicate that Respondent is commonly known by the disputed domain name. Accordingly, the Panel concludes that Respondent is not commonly known by the <nigeriagoogle.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Complainant urges that Respondent’s use of the <nigeriagoogle.com> domain name constitutes 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). Complainant alleges that the <nigeriagoogle.com> domain name resolves to a webpage that mimics the overall look and feel of Complainant’s Nigeria-specific website. Complainant asserts that Respondent’s webpage contains apparent links to “iGoogle,” “+Google,” and “Privacy,” which actually resolve to Respondent’s own <powermeeter.com> website, which is advertised as an “online, face-to-face speed-networking meeting place that allows you to make new business connections quickly and effectively.” Complainant further asserts that Respondent generates revenue from its redirection of Internet users to its website. The Panel finds that Respondent’s intent to benefit from the diversion of Internet users seeking services legitimately provided under Complainant’s marks demonstrates a lack of rights or legitimate interests under Policy ¶ 4(c)(i) and/or Policy ¶ 4(c)(iii). See 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 alleges that the disputed domain name “redirects to a page that mirrors the overall look and feel of [Complainant]’s Nigeria-specific website and decieves consumers into believing that the associated website is sponsored by, affiliated with, or endorsed by [Complainant] when that is not in fact the case.” The Panel assumes that Respondent realizes a commercial profit from the operation of its website and that its use of a confusingly similar domain name is an attempt to create confusion as to Complainant’s affiliation with Respondent. The Panel holds that Respondent’s attempt to create confusion in order to financially benefit from Complainant’s goodwill constitutes bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant alleges that the disputed domain name “redirects to a page that mirrors the overall look and feel of [Complainant]’s Nigeria-specific website and deceives consumers into believing that the associated website is sponsored by, affiliated with, or endorsed by [Complainant] when that is not in fact the case.” The Panel assumes that Respondent realizes a commercial profit from the operation of its website and that its use of a confusingly similar domain name is an attempt to create confusion as to Complainant’s affiliation with Respondent. The Panel holds that Respondent’s attempt to create confusion in order to financially benefit from Complainant’s goodwill constitutes bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nigeriagoogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 27, 2012
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