Google Inc. v. ekici O, serap
Claim Number: FA1405001562189
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is ekici O, serap (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleglassapps1.com>, registered with NETWORK SOLUTIONS, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2014; the National Arbitration Forum received payment on May 30, 2014.
On June 3, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <googleglassapps1.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 June 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@googleglassapps1.com. Also on June 4, 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.
Complainant submitted a Joint Request to Stay the Administrative Proceeding which was approved on June 24, 2014. An Order to Lift the Stay of Arbitration was subsequently granted on August 8, 2014.
On August 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the GOOGLE GLASS mark under Policy ¶ 4(a)(i). Complainant maintains one of the world’s largest collections of searchable documents, and it provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, allowing Internet users to search for and find a wide variety of content in many different languages.
Complainant provides evidence of its registrations for the GOOGLE GLASS mark as well as for its GOOGLE and GLASS marks via registration with the United States Patent and Trademark Office (“USPTO”)
Respondent’s <googleglassapps1.com> domain name is confusingly similar to Complainant’s registered marks. Respondent merely adds the descriptive term “apps” and the non-distinctive number “1.” Respondent also includes the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <googleglassapps1.com> domain name. Complainant has not authorized Respondent to register or use the domain name or Complainant’s marks in any way. Respondent is in no way affiliated with or endorsed by Complainant. The WHOIS information for Respondent’s disputed domain name makes no indication that Respondent is commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name because Respondent is passively holding the domain name. Respondent is undoubtedly familiar with Complainant’s marks and is attempting to trade off the goodwill established by Complainant. Respondent’s at-issue domain name resolves to a website indicating that the page is “under construction” and features links unrelated to Complainant.
Respondent registered and is using the <googleglassapps1.com> domain name in bad faith. Respondent is using the confusingly similar domain name to resolve to a parked website that features hyperlinks to third-parties unrelated to Complainant. Respondent had actual knowledge of Complainant’s marks based on Complainant’s extensive media coverage and recognition, and the fame of its marks.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent’s e-mail correspondence to the dispute resolution provider states that Respondent wishes to cancel the domain name.
Complainant has rights in the GOOGLE GLASS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to a website which contains links to entities in competition with Complainant.
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.”).
Preliminary Issue – Consent to Transfer
Respondent’s email to the dispute resolution provider raises the colorable issue of whether or not Respondent’s has consented to transfer the domain name to Complainant. If so, the necessity for the Panel to inquire into matters concerning Policy ¶4(a)(ii) and Policy ¶4(a)(ii) are moot. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) However, the Panel here finds that Respondent’s email statement does not unequivocally mimic the relief prayed for by Complainant since honoring Respondent’s request that the at-issue domain name be canceled would merely return the domain name to unregistered status whereas Complainant asks that the <googleglassapps1.com> domain name be transferred to Complainant.
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the GOOGLE GLASS trademark as well as related trademarks, demonstrates Complainant’s rights in a mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
In forming the at-issue domain name Respondent adds the descriptive term “apps” and the non-distinctive number “1” to Complainant’s GOOGLE GLASS trademark less its space, and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s GOOGLE GLASS trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <googleglassapps1.com> domain name is confusingly similar to Complainant’s GOOGLE GLASS mark. See Google Inc. v. serap ozk, FA 1562193 (Nat. Arb. Forum July 14, 2014) (finding that adding terms, removing the space in the GOOGLE GLASS mark and adding a gTLD does not add any distinction to a disputed domain name to avoid confusing similarity.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “ekici O, serap” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <googleglassapps1.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii).
Respondent is passively holding the disputed domain name. Further, Respondent is undoubtedly familiar with Complainant’s marks and is attempting to trade off the goodwill established by Complainant. Respondent’s domain name resolves to a website indicating that the page is “under construction” and features links unrelated to Complainant. These links include: “Glass Replacement,” “Sap Software,” “Glass Pivot Shower Doors,” and “Bifold Doors Glass.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Google Inc. v. Aloysius Thevarajah, FA1295342 (Nat. Arb. Forum Dec. 31, 2009) (finding a respondent’s use of a domain name to resolve to a parked webpage “is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).)”
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent is using the confusingly similar domain name to resolve to a parked website that features hyperlinks to third-parties unrelated to Complainant. Such use of the domain name demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Google Inc. v. Aloysius Thevarajah, FA1295342 (Nat. Arb. Forum Dec. 31, 2009) (concluding that respondent’s use of a confusingly similar domain name to resolve to a parked webpage that features hyperlinks to third-parties unrelated to a complainant “constitutes bad faith registration and use under Policy ¶ 4(b)(iv).”)
Finally, Respondent registered the <googleglassapps1.com> domain name knowing that Complainant had trademark rights in the GOOGLE GLASS mark. Respondent’s prior knowledge is evident from the popular notoriety of the GOOGLE GLASS trademark and from Respondent’s overt inclusion of Complainant’s entire trademark in the<googleglassapps1.com> domain name. Thus, Respondent registered the at-issue domain name to exploit its trademark value, rather than for some benign reason. Importantly, Respondent’s knowledge of Complainant's trademark further indicates that Respondent registered and used the <googleglassapps1.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleglassapps1.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 19, 2014
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