Google Inc. v. Dale Crawford
Claim Number: FA1406001564567
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Dale Crawford (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com>, registered with 1&1 Internet AG.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2014; the National Arbitration Forum received payment on June 13, 2014.
On June 18, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@googleglasssells.com, postmaster@googleglassespurchase.com, postmaster@googleglasssearch.com, postmaster@googleglassesonsalenow.com, postmaster@googleglassgalore.com, postmaster@googleglassonsalenow.com, postmaster@googleglassnowonsale.com, postmaster@googleglassesnowonsale.com, postmaster@googleglassappsgalore.com. Also on June 18, 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 July 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names are confusingly similar to Complainant’s GOOGLE GLASS mark.
2. Respondent does not have any rights or legitimate interests in the <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names.
3. Respondent registered and uses the <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its GOOGLE GLASS mark in connection with its new product that allows the user to access computer software and Internet websites through a hands-free electronic user interface. Complainant holds registrations for the GOOGLE GLASS mark with national trademark registrars, such as New Zealand (registered Feb. 7, 2013).
Respondent registered and is using the <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names solely for the purpose of selling them.
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 finds that Complainant has rights in its GOOGLE GLASS mark under Policy ¶ 4(a)(i) through its trademark registrations. See Google Inc. v. WP-3 / whoisproxy.com Ltd, FA 1538811 (Nat. Arb. Forum Feb. 20, 2014) (“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).”).
The disputed domain names all contain Complainant’s GOOGLE GLASS mark, along with variety of generic words or phrases that suggest the purchase or sale of GOOGLE GLASS products, and the gTDL “.com.” The Panel finds that these changes, and the lack of spacing, do not distinguish the disputed domain names from Complainant’s mark. See Mead Johnson & Company, LLC v. noom kung, FA 1521731 (Nat. Arb. Forum Oct. 24, 2013) (holding that the addition of multiple terms, both generic and descriptive, do not negate a finding of confusing similiarity); see also Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims Respondent is not known as the disputed domain name, nor could it be known by these names when Complainant has never licensed the use of the GOOGLE GLASS mark to denizens such as Respondent. The WHOIS information for the disputed domain names lists “Dale Crawford” as the registrant of record. The Panel finds that there is no evidence to establish that Respondent is commonly known as any of the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the domain names, as of March 2, 2014, was for purposes of promoting the sale of domain names at <businessdomainsale.com>, including domain names that featured the entire GOOGLE GLASS mark. The Panel notes that the disputed domain names resolved to a website featuring stock images and various categories of domain names for sale, including one for “Google Glass Domain Names For Sale. The <googleglassesnowonsale.com> domain name still resolves to the <businessdomainsale.com> website. Panel finds that using these domain names to shuttle Internet users to a marketplace of domain names is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant shows that, effective June 13, 2014 all but the <googleglassesnowonsale.com> domain name did not resolve to an active website. The Panel finds that the inactive holding of domain names is also not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent was using the disputed domain names until June 2014 for the explicit purpose of selling them and advertising other domain names for sale. The Panel finds that his constitutes bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent now holds eight of the disputed domain names passively, with previous active use of the domain names to promote the sale of those and other domain names, evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s use of the disputed domain names to promote GOOGLE GLASS products demonstrates Respondent’s actual knowledge of the GOOGLE GLASS mark. The Panel agrees and finds that Respondent actually knew of Complainant’s rights in the mark, bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleglasssells.com>, <googleglassespurchase.com>, <googleglasssearch.com>, <googleglassesonsalenow.com>, <googleglassgalore.com>, <googleglassonsalenow.com>, <googleglassnowonsale.com>, <googleglassesnowonsale.com>, and <googleglassappsgalore.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 17, 2014
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