Google Inc. v. Zeljko Stanic
Claim Number: FA1408001575359
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Zeljko Stanic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-suche.com>, registered with GODADDY.COM, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2014; the National Arbitration Forum received payment on August 15, 2014.
On August 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <google-suche.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 August 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@google-suche.com. Also on August 19, 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses the GOOGLE mark in connection with Internet search services and related products.
2.Complainant owns the GOOGLE mark through numerous trademark registrations with trademark agencies throughout the world, including registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,884,502 registered Jan. 20, 2004), and the Intellectual Property Office of the Republic of Serbia (e.g., Reg. No. 860,242 registered Apr. 28, 2005).
3. The <google-suche.com> domain name, registered on May 13, 2014,
is confusingly similar to the GOOGLE mark. The term “suche” is translated from German to mean “search” in English.
4. Respondent enjoys no rights or legitimate interests in the disputed domain name. Complainant is not affiliated with Respondent, and Respondent is not known by the disputed domain name. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
5. The name resolves to offer Internet search and paid business listing services. Respondent’s use is diversionary and for profit.
6. Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name is in violation of Policy ¶ 4(b)(iii) as the name resolves to offer Internet search engine and business listing services, which compete with or are closely related to those provided by Complainant.
7. Further, Respondent is in violation of Policy ¶ 4(b)(iv) as Respondent is attempting to mislead users into affiliating the disputed domain name with Complainant in order for Respondent to profit. Respondent even employs an imitation of the GOOGLE logo.
8. Respondent had knowledge of Complainant’s rights in the GOOGLE mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, the Respondent sent an e-mail to the National Arbitration Forum on August 29, 2014, in which Respondent agreed to transfer the disputed domain name. In pertinent part, Respondent wrote in that email:
“I registered this domain for my webhosting client and I haven't got NO intention in breaking any laws or using registered trade marks in manner of abuse. I would be more than glad to put this domain name to be be (sic) transferred to the Complainant, cancelled, or changed pursuant to the Uniform Domain Name Dispute Resolution Policy.”.
Preliminary Issue: Consent to Transfer
The Panel has perused the email referred to above and concludes that it contains an unambiguous consent to the transfer of the <google-suche.com> domain name from Respondent to Complainant. Respondent also informed the National Arbitration Forum and hence the Panel in the same email that the domain name was registered for its webhosting client.
After the initiation of this proceeding, the registrar placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead consents to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <google-suche.com> domain name. 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).There are many other UDRP decisions to the same effect and the approach adopted in those decisions may now be said to comprise the traditional manner of dealing with such cases of clear consent. See :Scores Holding Company, Inc. v. jason davison, FA1403001551756 (April 26, 2014); and Citigroup Inc. v. Texas International Property Associates- NA NA , FA0806001210904 (Nat. Arb. Forum, Aug. 5, 2008).
In the particular circumstances of this proceeding, the Panel also concludes that it should forego the traditional UDRP analysis and order an immediate transfer of the <google-suche.com> domain name to 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.
However, it is clear from the above decisions that such an analysis is not necessary where Respondent has consented to the transfer of the disputed domain name, as Respondent has done in the present case. Respondent has used the words in response to the Complaint, of which he had notice: “I would be more than glad to put this domain name to be be (sic) transferred to the Complainant, cancelled, or changed pursuant to the Uniform Domain Name Dispute Resolution Policy.”.
Those
words can be interpreted only as an unequivocal consent by Respondent that the
disputed domain name should be transferred to Complainant. As the Panel finds
that these are the facts, the Panel also finds that this is an appropriate case
to apply the conclusions and reasoning in the above decisions.
Accordingly, the Panel finds that it is unnecessary and inappropriate to make any other findings of fact or law and that it should proceed forthwith to order the transfer of the disputed domain name to Complainant.
For the reasons given above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google-suche.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 29, 2014
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