Google Inc. v. Google Inc. / DNS Admin ()
Claim Number: FA1303001488629
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Google Inc. / DNS Admin () (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlednsservice.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 6, 2013.
On March 5, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <googlednsservice.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 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@googlednsservice.com. Also on March 6, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <googlednsservice.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
The GOOGLE Mark identifies Complainant’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services. The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Complainant. As a result, the GOOGLE Mark and name symbolize the substantial goodwill associated with Complainant and are of immense value. Due to widespread and substantial international use, the GOOGLE Mark and name have become famous. Complainant owns numerous United States and other foreign registrations for the GOOGLE Mark dating back to as early as 1999. Among Complainant’s many offerings is its Google Public DNS service, which is a free, global Domain Name System (“DNS”) resolution service. By using Google Public DNS, users can speed up their web browsing experience, improve security and get expected results with no redirection.
According to the WHOIS database, Respondent claims to be “Google Inc. / DNS Admin ().” However, Respondent is not affiliated with Complainant, and Complainant does not own or control the domain name at issue. On information and belief, Respondent falsely identified itself as Google in order to deceive users regarding Complainant’s affiliation with the domain name. Respondent registered the Domain Name on February 7, 2013, years after Complainant’s launch of the Google Public DNS service. The disputed domain name does not currently resolve to an active page.
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.”).
Complainant owns rights in the GOOGLE Mark that predate the registration date of the disputed domain name. See, e.g., Pirelli & C. S.p.A. v. Parisa Tabriz, FA921798 (Nat’l Arb. Forum April 12, 2007); FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (Nat’l Arb. Forum March 26, 2003) (“[T]he FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark.”). A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the domain name at issue incorporates the famous GOOGLE Mark in its entirety, and is confusingly similar to the GOOGLE Mark. A domain name registrant may not avoid likely confusion by simply adding a descriptive or
non-distinctive term to another’s mark. See, e.g., Google Inc. v. Kun Zhang,
FA0901001245131 (Nat’l Arb. Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the domain name googlevideodownload.com); Google Inc. v. Babaian, FA0708001060992 (Nat’l Arb. Forum Oct. 1, 2007) (finding that where the registrant merely added of “generic words [like] ‘web,’ ‘data,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar under Policy ¶ 4(a)(i)). In this instance, the disputed domain name merely adds the descriptive and non-distinctive terms “DNSService” after the GOOGLE Mark. The fame of the distinctive GOOGLE Mark and the non-distinctiveness of the added terms will cause users encountering the domain name to mistakenly believe it originates from, is associated with or is sponsored by Complainant. Moreover, the use of the phrase “DNS Service” with the GOOGLE Mark confirms the confusing similarity because the phrase plainly refers to the Google Public DNS service offered by Complainant under the GOOGLE Mark.
According to the WHOIS database, Respondent claims to be “Google Inc. / DNS Admin ().” However, Respondent is not affiliated with Google, and Google does not own or control the domain name at issue. Apparently, Respondent falsely identified itself as Google in order to deceive users regarding Complainant’s affiliation with the domain name.
The Panel finds that Policy ¶ 4(a)(i) has been established.
As Panels have noted in evaluating infringing GOOGLE-formative domains, any “[r]espondent 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.” Google Inc. v. Mikel M Frieje, FA011000102609 (Nat’l Arb. Forum Jan. 11, 2002). Respondent’s WHOIS information in connection with the Domain Name falsely identifies Respondent as Google. A registrant may be found to lack any right or legitimate interest in a domain name where there is no further evidence other than false WHOIS information indicating it is known by that name. See Microsoft Corporation v. Microsoft Corporation, FA1105001390322 (Nat’l Arb. Forum Jun. 17, 2011) (“While the WHOIS information states that the domain name registrant is ‘Microsoft Corporation,’ the Panel is not required to find
that Respondent is commonly known by the domain name absent further supporting evidence. . . . The Panel has examined the record and can find no such additional evidence that Respondent is commonly known by the disputed domain name. Additionally, Respondent is in no way affiliated with Complainant and has not received permission to use the MICROSOFT trademark. As such, the Panel finds that Respondent is not commonly known by the <microsoftetest.com> domain name pursuant to Policy ¶ 4(c)(ii).”). Complainant has not authorized or licensed Respondent to use any of its trademarks in any
way. Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).
Respondent cannot claim that it is offering bona fide goods or services by redirecting users who are seeking Complainant’s Google Public DNS service to a website that fails to resolve to an active page. Respondent’s failure to use the Domain Name in connection with any substantive content, taken together with the foregoing, is sufficient to establish that Respondent has no rights or legitimate interests in the domain name. See, e.g., Gaggia S.p.A.
v. Kliang, D2003-0982 (WIPO Feb. 8, 2004) (holding respondent lacked any right or legitimate interest in domain featuring its well known mark that resolved to no website at all or an “under construction” page); Staples, Inc. v. Conrad, D2003-0713 (WIPO Oct. 27, 2003) (holding respondent lacked any right or legitimate interest in domain name featuring famous STAPLES mark that resolved to webpage lacking any substantive content).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the disputed domain name, make it extremely unlikely that Respondent created the domain name independently. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat’l Arb. Forum Jul. 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time
[r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”). Given Respondent’s registration of a domain name that consists almost entirely of Complainant’s famous GOOGLE Mark, it is impossible to conceive of any potential legitimate use of the domain name at issue. As such, the Domain Name is being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that
Respondent was unaware of Complainant's trademark . . . Respondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”); Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May
31, 2004) (finding that registrant’s “passive use” amounted to bad faith use due to the fame of the complainant’s mark and lack of evidence of any good faith).
Where a domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used . . . its domain names for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control TechniquesLtd.
v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006). The fact that the webpage associated with the domain name at issue contains no substantive content, in light of all of the circumstances present here, constitutes bad faith use of the Domain Name. In determining bad faith use, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” Telstra Corp. Ltd. v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Moreover, Respondent has falsely identified itself as Google in connection with the Domain Name’s WHOIS record. Respondent’s intentional concealment of its identity further establishes that his registration and use of the Domain Name is in bad faith. See Yahoo!, Inc. v. Eitan Zviely, D2000-0273 (WIPO June 14, 2000) (finding that “[Respondent’s] registration under phony names” constitutes bad faith registration and use); Salomon Smith Barney Inc. v. Salomon Internet Servs., D2000-0668 (WIPO Sept. 4, 2000) (finding bad faith use and registration where Respondent had “taken steps to conceal its true identity”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlednsservice.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 3, 2013
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