Google Inc. v. WP-3 / whoisproxy.com Ltd
Claim Number: FA1401001538811
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington D.C., USA. Respondent is WP-3 / whoisproxy.com Ltd (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <howtogetglass.com>, registered with Az.pl, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2014; the National Arbitration Forum received payment on January 13, 2014.
On January 14, 2014, Az.pl, Inc. confirmed by e-mail to the National Arbitration Forum that the <howtogetglass.com> domain name is registered with Az.pl, Inc. and that Respondent is the current registrant of the name. Az.pl, Inc. has verified that Respondent is bound by the Az.pl, 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 January 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2014 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@howtogetglass.com. Also on January 15, 2014, 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 February 7, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Policy ¶ 4(a)(i): the disputed domain name is confusingly similar to the GLASS mark, in which Complainant has rights.
a. Founded in 1997, Complainant is a provider of Internet search engine services, as well as a wide range of Internet-related products and services.
b. In April of 2012, Complainant announced its work on a new wearable computing device worn on the head, advertising and publicizing the new products under the GLASS mark. See Complainant’s Annexes 7 and 8. Although Complainant’s GLASS-branded products are not yet available for sale to the general public, they have received significant media coverage and public exposure. See Complainant’s Annexes 9-13.
c. Complainant owns national registrations for the GLASS mark in countries throughout the world, and applied to register the mark in both the United States and the European Union. Each of Complainant’s applications and registrations has an effective filing date of March 14, 2012. See Complainant’s Annex 14.
i. Complainant holds trademark registrations for the GLASS mark in, among others, the following countries:
1. Switzerland (Reg. No. 641,737 registered March 25, 2013);
2. Croatia (Reg. No. Z20121200 registered April 30, 2013);
3. Norway (Reg. No. 270,730 registered May 21, 2013);
4. Serbia (Reg. No. 65,077 registered November 23, 2012);
5. Japan (Reg. No. 5,624,125 registered October 18, 2013);
6. Kenya (Reg. No. 75,351 registered July 11, 2013);
7. Turkey (Reg. No. 2012 58668 registered September 24, 2013);
8. Moldova (Reg. No. 24,177 registered June 22, 2013); and
9. Chile (Reg. No. 1,051,317 registered November 4, 2013).
d. The <howtogetglass.com> domain name fully incorporates Complainant’s mark, merely adding the terms “how,” “to,” and “get” (generic terms in connection with the offer on the resolving website that purports to direct consumers “how to get GLASS” online).
2. Policy ¶ 4(a)(ii): Respondent has no rights or legitimate interest in respect of the disputed domain name.
a. Respondent is not commonly known as the <howtogetglass.com> domain name or any name containing the GLASS mark.
i. Complainant has not authorized Respondent to register or use the <howtogetglass.com> domain name.
ii. Neither Respondent nor the services promoted on the website resolving from the disputed domain name are affiliated with, associated with, or otherwise endorsed by Complainant.
iii. Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the domain or the GLASS mark.
b. Respondent also is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
i. The disputed domain name currently resolves to a website titled “Google Glass Giveaway – How to get Google Glass for free,” where Respondent falsely purports to offer consumers the opportunity to obtain Complainant’s GLASS device through a giveaway contest. See Complainant’s Annex 17.
1. Complainant is not offering any giveaway of its products and has not authorized Respondent or any other company to use the GLASS mark in this manner.
ii. Respondent uses the disputed domain in an attempt to redirect consumers seeking information from Complainant as to how to get Complainant’s GLASS device not only to Respondent’s own website, but also to the websites that are linked from Respondent’s website. Respondent then profits from Internet users who are mistakenly diverted to Respondent’s website or the websites linked to Respondent’s website.
iii. Respondent attempts to pass itself off as Complainant through Respondent’s use of pictures copied from Complainant’s official GLASS site and Respondent’s use of Complainant’s GLASS mark at Respondent’s resolving website.
3. Policy ¶ 4(a)(iii): the disputed domain name has been registered and is being used in bad faith.
a. Respondent’s use of the disputed domain to offer a false giveaway of Complainant’s products unfairly competes with and is inherently disruptive to Complainant’s business.
b. Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s GLASS mark, for Respondent’s commercial gain.
c. Respondent’s activities also constitute “passing off.”
d. Given the extensive use, media coverage, and increasing notoriety of the GLASS mark and Complainant’s worldwide trademark filings, it is extremely unlikely that Respondent created the <howtogetglass.com> domain name independently. The fact that Respondent’s website purports to offer a giveaway for Complainant’s GLASS device, prominently displays the stylized mark, and features photographs from Complainant’s website, provides compelling evidence that Respondent had actual knowledge of the GLASS mark upon registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc., of Mountain View, CA, USA. The GOOGLE name and company were created in 1997 by Larry Page and Sergey Brin. The GOOGLE name has been continuously used since that time primarily as a search engine available to computer users around the world. Complainant’s primary website is <google.com> but Complainant owns and operates hundreds of additional GOOGLE-formative domain names, including nearly all top level country code domains solely consisting of GOOGLE. Complainant owns numerous domestic and foreign trademark registrations for the GOOGLE mark dating back as early as 1998. In April of 2012, Complainant announced its work on a new wearable computing device worn on the head, advertising and publicizing the new products under the GLASS mark. Complainant owns national registrations for the GLASS mark in countries throughout the world, and has applied to register the mark in both the United States and the European Union.
Respondent is WP-3 / whoisproxy.com Ltd., of Szezecin, Poland. Respondent’s registrar’s address is listed as the same location. Respondent registered the <howtogetglass.com> domain name on or about August 20, 2013.
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 states that it has provided Internet search engine services, as well as a wide range of Internet-related products and services, since its founding in 1997. According to Complainant, Complainant announced its work on a new wearable computing device worn on the head in April 2012, and has since publicized the new product under the GLASS mark. Although Complainant’s GLASS-branded products are not yet available for sale to the general public, Complainant maintains that they have received significant media coverage and public exposure. Complainant claims to have filed applications to register the GLASS mark with trademark authorities around the world on March 14, 2012. As of the date of the Complaint, Complainant claims to have obtained a national trademark registration for the GLASS mark in the following countries, among others: Switzerland (Reg. No. 641,737 registered March 25, 2013); Croatia (Reg. No. Z20121200 registered April 30, 2013); Norway (Reg. No. 270,730 registered May 21, 2013); Serbia (Reg. No. 65,077 registered November 23, 2012); Japan (Reg. No. 5,624,125 registered October 18, 2013); Kenya (Reg. No. 75,351 registered July 11, 2013); Turkey (Reg. No. 2012 58668 registered September 24, 2013); Moldova (Reg. No. 24,177 registered June 22, 2013); and Chile (Reg. No. 1,051,317 registered November 4, 2013). Because Complainant’s GLASS mark has already been granted trademark protection in several countries around the world, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”), see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that the <howtogetglass.com> domain name is confusingly similar to the GLASS mark in which Complainant has rights. Complainant explains that the disputed domain name fully incorporates Complainant’s mark, merely adding the terms “how,” “to,” and “get” (generic terms in connection with the offer on the resolving website that purports to direct consumers “how to get GLASS” online). Complainant also notes the “.com” generic top-level domain (“gTLD”). In Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004), the panel found that the addition of generic terms to the complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names. Further, past panels have agreed that gTLDs are incapable of distinguishing a disputed domain name from a claimed mark. See, e.g., Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel here finds that Respondent’s <howtogetglass.com> domain name is confusingly similar to Complainant’s GLASS mark for the purposes of Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant avers that Respondent has no rights or legitimate interest in respect of the <howtogetglass.com> domain name. Complainant contends that Respondent is not commonly known as the <howtogetglass.com> domain name or any name containing the GLASS mark. Complainant maintains that it has not authorized Respondent to register or use the <howtogetglass.com> domain name, and that Respondent nor the services promoted on the website resolving from the disputed domain name are affiliated with, associated with, or otherwise endorsed by Complainant. Complainant adds that the WHOIS information in connection with the disputed domain name makes no mention of the domain or the GLASS mark. The Panel notes that the WHOIS information on record lists Respondent as “WP-3 / whoisproxy.com Ltd.” Given the evidence on the record and the fact that Respondent has failed to satisfy its burden of rebutting Complainant’s claims, the Panel finds that Respondent is not commonly known as the <howtogetglass.com> domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). According to Complainant, the disputed domain name currently resolves to a website titled “Google Glass Giveaway – How to get Google Glass for free,” where Respondent falsely purports to offer consumers the opportunity to obtain Complainant’s GLASS device through a giveaway contest. Complainant says that it is not offering any giveaway of its products and has not authorized Respondent or any other company to use the GLASS mark in this manner. Complainant posits that Respondent is actually using the disputed domain in an attempt to redirect consumers seeking information from Complainant as to how to get Complainant’s GLASS device not only to Respondent’s own website, but also to the websites that are linked from Respondent’s website. Complainant believes that Respondent then profits from Internet users who are mistakenly diverted to Respondent’s website or the websites linked to Respondent’s website. Past panels have been unsympathetic toward respondents who use a complainant’s mark for the mere purpose of attracting Internet traffic to respondent’s unrelated, commercial website. See, e.g., Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds Respondent lacks rights or legitimate interests in the <howtogetglass.com> domain name, and that Respondent has failed to associate the domain’s resolving website with a Policy ¶ 4(c)(i) bona fide offering of goods or services or with a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that in order to further the credulity of its scheme, Respondent attempts to pass itself off as Complainant through the use of pictures copied from Complainant’s official GLASS site and the use of Complainant’s GLASS mark at Respondent’s resolving website. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel held that as the respondent attempted to pass itself off as the complainant online, which was a blatant unauthorized use of the complainant’s mark, the respondent had no rights or legitimate interests in the disputed domain name. The Panel here finds that Respondent’s actions seeking to improperly pass itself off as Complainant online, further support the conclusion that Respondent lacks rights and legitimate interests in the <howtogetglass.com> domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent’s use of the disputed domain to offer a false giveaway of Complainant’s products unfairly competes with and is inherently disruptive to Complainant’s business. The Panel finds that Respondent appears to be appropriating Complainant’s mark for Respondent’s own purposes. The Panel further notes that Respondent does not actually offer Complainant’s or similar products at the disputed domain, and in fact Complainant itself does not yet offer GLASS products for sale to the general public. The Panel finds that Respondent’s disruption of Complainant’s advertising and branding of its GLASS mark is sufficient to support a Policy ¶ 4(b)(iii) bad faith finding. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).
Complainant next contends that Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s GLASS mark, for Respondent’s commercial gain. Complainant asserts that Respondent seeks to create such confusion by both registering a confusingly similar domain name and attempting to pass itself off as Complainant online through the use of Complainant’s protected marks and photos on <howtogetglass.com>’s resolving website. Complainant claims that Respondent generates commercial gain by hosting sponsored links on the at-issue website, rather than actually giving away Complainant’s products as the domain name and website would suggest. Because Respondent has intentionally attempted to attract Internet users to the <howtogetglass.com> domain name in order to achieve an unfair commercial gain, the Panel finds that Respondent registered and uses the <howtogetglass.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the disputed domain name and the complainant’s mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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 Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <howtogetglass.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 20, 2014
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