DECISION

 

Google Technology Inc. v. Andrew Strick

Claim Number:  FA0306000162049

 

PARTIES

Complainant is Google Technology, Inc., Mountain View, CA (“Complainant”) represented by Rose A. Hagan.  Respondent is Andrew Strick, Castle Rock, CO (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googlejobs.com>, registered with Enom, Inc.

 

PANEL

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.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 6, 2003; the Forum received a hard copy of the Complaint on June 10, 2003.

 

On June 9, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <googlejobs.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@googlejobs.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 11, 2003 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed  Hon. Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <googlejobs.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <googlejobs.com> domain name.

 

3.      Respondent registered and used the <googlejobs.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is one of the largest and most recognized providers of Internet search services in the world and has used the GOOGLE mark in conjunction with those services since 1997.  Complainant has submitted several applications with the U.S. Patent and Trademark Office for the GOOGLE mark including, App. Nos. 75,554,461 (filed September 16, 1998) and 75,978,469 (filed September 16, 1999).  Also, Complainant holds several registrations for the GOOGLE mark worldwide, including, Australian Reg. No. 788234 issued March 12, 1999, Canadian Reg. No. TMA539576 issued January 12, 2001, and Swiss Reg. No. 470018 issued March 12, 1999.

 

Complainant registered the <google.com> domain name on September 15, 1997 and uses it to provide assistance to Internet users for Internet research and navigation. 

 

Respondent registered the <googlejobs.com> domain name on April 18, 2002.  The disputed domain name is used by employers to post job opportunities and provides job search services to Internet users. 

 

DISCUSSION

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."

 

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.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established its right in the GOOGLE mark through registration with internationally recognized trademark authorities, applications with the U.S. Patent and Trademark Office, and through use in commerce.

 

Respondent’s <googlejobs.com> domain name is confusingly similar to Complainant’s GOOGLE mark because the disputed domain name fully incorporates Complainant’s mark and merely adds the generic word “jobs.”  The addition of the generic word “jobs” fails to circumvent the Panel from finding that the disputed domain name is confusingly similar to Complainant’s mark because the <googlejobs.com> domain name fully incorporates Complainant’s mark and could easily cause Internet users to mistakenly assume that Respondent’s disputed domain name is associated with Complainant.  See Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (finding the addition of the generic word “sex” to the GOOGLE mark in a domain name was confusingly similar to Complainant’s mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights or a legitimate interest in the disputed domain name.

 

The Panel is free to make all inferences in favor of Complainant when Respondent fails to respond.  See Vertical Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Due to Respondent’s failure to respond to the Complaint, the Panel presumes that Respondent lacks rights or a legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

 

Also, the Panel presumes that Respondent has attempted to cause confusion for Internet users and to commercially benefit from the goodwill associated with Complainant’s mark by fully incorporating the GOOGLE mark into the <googlejobs.com> domain name.  Respondent’s attempt to commercially gain through Internet confusion is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, in hopes of attracting Complainant’s customers, thus finding no rights or legitimate interests).

 

Furthermore, Respondent never acquired authorization from Complainant to use Complainant’s mark and the record fails to establish that Respondent is commonly known by the <googlejobs.com> domain name.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Finally, Respondent would be hard pressed to show that it has rights or legitimate interests in the disputed domain name because Complainant’s mark is so well-known.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret  v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

 

The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

It can be inferred that Respondent had knowledge of Complainant’s GOOGLE mark because the mark is distinctive, recognized worldwide, has been registered in several countries, has been in use since 1997, and is fully incorporated into Respondent’s disputed domain name.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

 

Moreover, Respondent registered the disputed domain name and incorporated Complainant’s mark with the intent to commercially benefit from the goodwill associated with Complainant’s mark.  Respondent attempted to commercially benefit from the disputed domain name because Respondent used the disputed domain name to provide job search services to Internet users.  Respondent’s attempts to commercially benefit through Internet confusion associated with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googlejobs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  July 25, 2003