Google Inc. v. Joey Martelli
Claim Number: FA1412001597126
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Joey Martelli (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-advertising.us> and <google-placementads.us>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 24, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <google-advertising.us> and <google-placementads.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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-advertising.us, as well as postmaster@google-placementads.us. Also on January 6, 2015, 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 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant alleges that it owns the GOOGLE mark through registrations with numerous trademark authorities including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). Complainant uses GOOGLE to identify its online search engine and related services and products. The <google-advertising.us> and <google-placementads.us> domain names are confusingly similar to the GOOGLE mark. The disputed domain names incorporate the GOOGLE mark in full and add terms associated with Complainant’s advertisement services such as “placement ads” and “advertising.”
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not the owner or beneficiary of any trade or service mark comprising the domain names. In addition, Complainant has not authorized Respondent to use GOOGLE in domain names, nor is Complainant affiliated with Respondent in any way. There is no evidence that Respondent is known by the disputed domain names. Further, Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. The <google-advertising.us> domain name resolves to a website purporting to offer Internet advertisement placement services. See Compl., at Attached Ex. 9. Respondent is using this domain name to divert users, for commercial gain, to its own website in competition with Complainant. As for the <google-placementads.us> domain name, this domain name resolves to a parking page that features advertising links unrelated to Complainant. See Compl., at Attached Ex. 10. It appears that after Respondent received notice of the Initial Complainant, Respondent modified the resolving websites to indicate that a website was coming soon.
Complainant next argues that Respondent registered and is using the <google-advertising.us> and <google-placementads.us> domain names in bad faith. Respondent’s use of the <google-advertising.us> domain name in furtherance of Internet advertisement services in competition with Complainant’s comparable services is disruptive of Complainant’s business and therefore indicative of Policy ¶ 4(b)(iii) bad faith. Similarly, Respondent’s use of the google-advertising.us> domain name in this fashion reveals Respondent’s intent to use the disputed domain name to exploit the confusing similarity between the domain name and the GOOGLE mark. Respondent’s use of a parking webpage for the <google-placementads.us> domain name is further evidence of bad faith. Given the aforementioned circumstances as well as the fame of the GOOGLE mark, Complainant alleges that it is clear that Respondent registered these domain names with actual knowledge of Complainant’s rights, which is evidence of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Respondent registered <google-placementads.us> on October 12, 2014 and the <google-advertising.us> domain name on September 19, 2013.
C. Additional Submissions
Although Respondent did not file a Response according to the Rules, it did submit an e-mail communication to the Forum on January 20, 2015. In this communication, the Respondent expressed his indifference toward these domain names but conceded that he was in control of both domain names.
Given that the Respondent failed to file a Response and that the only Response that was received was a non-responsive concession as to who controlled the two domain names at issue, the Panel is left no choice other than accepting the Complainant’s allegations as true as they are not clearly unreasonable.
Therefore, the Panel finds that the Respondent’s domain names are confusingly similar if not identical to Complainant’s famous trademark; that the Respondent had no rights or legitimate interests in the domain names; and that registration and use of the domain names by the Respondent was done in bad faith.
The entities which control the domain names at issue here are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS records for the domain names list the same name and contact phone number. See Compl., at Attached Ex. 4. Further, each domain name was altered after the Initial Complainant to resolve to a website featuring a green shaded circle containing the text “website coming soon” See Compl., at Attached Ex. 11. These similarities, coupled with Respondent’s concession in the e-mail correspondence with the National Arbitration Forum that the two domain names are in his control, leads the Panel to determine that Respondent is in control of both the <google-advertising.us> and <google-placementads.us> domain names at issue.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses GOOGLE to identify its online search engine and related services and products, including online advertising placements. Complainant owns the GOOGLE mark through registrations with numerous trademark authorities including the USPTO (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). Such registrations serve to demonstrate its Policy ¶ 4(a)(i) rights in the mark. The Panel agrees that the Complainant has demonstrated rights in the GOOGLE mark for purposes of Policy ¶ 4(a)(i) through its valid USPTO trademark registrations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).
Complainant claims the <google-advertising.us> and <google-placementads.us> domain names are confusingly similar to the GOOGLE mark. Complainant notes the disputed domain names incorporate the GOOGLE mark in full, and add terms associated with Complainant’s advertisement services such as “placement ads” and “advertising.” The Panel also notes that the disputed domain names differ from the GOOGLE mark by the appearance of a hyphen and the country-code top-level domain (“ccTLD”) “.us.” Prior panels have determined that such alterations fail to distinguish a domain name from a wholly incorporated mark. See Seiko Epson Corp. and Epson America, Inc. v. Mint, FA 1449525 (Nat. Arb. Forum Aug. 24, 2012) (finding the <epson-support.us> domain name confusingly similar to the EPSON mark). The Panel determines that the <google-advertising.us> and <google-placementads.us> domain names are confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i) as the domain names incorporate the mark in full, and merely add terms relating to the mark as well as the non-distinguishing hyphen and ccTLD.
Complainant claims that Respondent is not the owner or beneficiary of any trade or service mark identical to the domain names. This Panel agrees that Respondent has failed to make any showing of demonstrable rights in any trademark so as to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Next, Complainant asserts that it has not authorized Respondent to use GOOGLE in domain names, nor is Complainant affiliated with Respondent in any way. Complainant also claims there is no evidence, including the WHOIS, that Respondent is known by the disputed domain names. The Panel notes that the WHOIS information lists “Joey Martelli” as the registrant of record for both domain names at issue. In light of the available evidence, which is absent any meaningful submission from Respondent, the Panel determines that there is no basis to find Respondent commonly known by the <google-advertising.us> and <google-placementads.us> domain names per Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. First, Complainant asserts that the <google-advertising.us> domain name resolves to a website purporting to offer Internet advertisement placement services. See Compl., at Attached Ex. 9. Complainant argues that Respondent’s use of this domain name to divert users, for commercial gain, to its own website in competition with Complainant, demonstrates that Respondent does not deserve the protections afforded by Policy ¶ 4(a)(ii). The Panel notes that Respondent features the GOOGLE mark and logo on the resolving page so as to engender Complainant’s authorization. See id. The Panel agrees that Respondent’s use of the <google-advertising.us> domain name in furtherance of Internet advertisement placement services in competition with Complainant, and under Complainant’s apparent authority, does not constitute a bona fide offering of goods or services as protected by Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use as described in Policy ¶ 4(c)(iv). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
As the Respondent failed to file a responsive Response, the Panel takes these allegations as true.
As for the <google-placementads.us> domain name, Complainant claims this domain name resolves to a parking page that features advertising links unrelated to Complainant. See Compl., at Attached Ex. 10. Complainant argues that such use does not confer rights in the domain name. In support of this claim, Complainant cites to Google Inc. v. Aloysius Thevarajah, FA 1295342 (Nat. Arb. Forum Dec. 31, 2009), where the panel determined that the respondent’s use of a domain name to resolve to a parked webpage did not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(a)(ii). Consistent with such precedent, the Panel finds that Respondent’s use of the <google-placementads.us> domain name with a parked webpage is insufficient to show Respondent has any rights or legitimate interests in the disputed domain name.
Complainant adds that it appears that after Respondent received notice of the Initial Complaint, Respondent modified the resolving websites to indicate that a website was coming soon. See Compl., at Attached Ex. 11. Complainant argues that such post-notice modification cannot mollify Respondent’s demonstrated Policy ¶ 4(a)(ii) deficiencies. The Panel agrees that Respondent’s modification of the landing pages to a “coming soon” page upon receipt of the Initial Complaint offers no reprieve from Respondent’s shortcomings per Policy ¶ 4(a)(ii). See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[UDRP] ¶ 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
As such, the Panel finds that the Respondent lacks any rights or legitimate interests in or to the domain names at issue here. As the Respondent has failed to file a responsive Response, the Panel takes as true Complainant’s allegations in this regard as well.
Complainant argues that Respondent’s use of the <google-advertising.us> domain name in furtherance of Internet advertisement services in competition with Complainant’s comparable services is disruptive of Complainant’s business and therefore indicative of Policy ¶ 4(b)(iii) bad faith. See Compl., at Attached Ex. 9. Panels have found evidence of bad faith under Policy ¶ 4(b)(iii) where the respondent is using the disputed domain name to advertise or market goods or services in competition with the complainant. As Complainant has presently detailed Respondent’s use of the <google-advertising.us> domain name to promote ad placement services in competition with Complainant, the Panel finds Respondent has engaged in commercial disruption as proscribed by Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Similarly, Complainant argues that Respondent’s use of the google-advertising.us> domain name to promote competing ad placement services reveals Respondent’s intent to use the disputed domain name to exploit the confusing similarity between the domain name and the GOOGLE mark. See Compl., at Attached Ex. 9. The Panel recalls that the resolving page features the GOOGLE mark and logo. See id. The Panel agrees that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv) as the disputed domain name resolves to feature competing advertising placement services under the apparent sponsorship of Complainant, and Respondent presumably profits from the guise. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to [UDRP] ¶ 4(b)(iv).”).
Complainant next argues that Respondent’s use of a parking webpage for the <google-placementads.us> domain name is further evidence of bad faith. The Panel recalls that the disputed domain name resolves to a page parked by GoDaddy, which features links on its behalf. See Compl., at Attached Ex. 10. Prior panels have determined that a respondent remains responsible for the parked content and that such use is demonstrative of bad faith pursuant to Policy ¶ 4(b)(iv). See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent allowed the parking service to access the domain name, instead of resolving the webpage to a blank page). Accordingly, the Panel finds evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv) with respect to the <google-placementads.us> domain name.
Finally, given the aforementioned circumstances as well as the fame of the GOOGLE mark, Complainant argues it is clear that Respondent registered these domain names with actual knowledge of Complainant’s rights, which is evidence of bad faith registration. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. Prior panels have inferred actual knowledge where the disputed domain name is comprised and used in such a way that demonstrates the respondent’s familiarity with the complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Further, panels have inferred actual knowledge where a famous mark is at issue. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under [UDRP] ¶ 4(a)(iii).”). Here, the Panel recalls that the <google-advertising.us> domain name resolved to a website purporting to offer Internet advertisement placement services under the auspices of Complainant and even relied on Complainant’s GOOGLE logo. See Compl., at Attached Ex. 9. Given the fame of the GOOGLE mark, and Respondent’s apparent familiarity with the GOOGLE brand and related services, the Panel determines that Respondent registered these <google-advertising.us> and <google-placementads.us> domain names with actual knowledge of Complainant’s rights in the GOOGLE mark, and therefore find additional evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Again, as Respondent has failed to file a responsive Response, the Panel accepts Complainant’s allegations as true as they are not inconsistent with the given evidence. As such, the Panel finds the Respondent registered and is using both domain names here in bad faith.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <google-advertising.us> and <google-placementads.us> domain names transferred from Respondent to Complainant.
Kenneth L. Port Panelist
Dated: February 7, 2015
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