Google Technology Inc. v. Tenacia
Technologies c/o Matthew Graves
Claim
Number: FA0306000162059
Complainant is Google Technology, Inc., Mountain
View, CA (“Complainant”) represented by Rose
A. Hagan. Respondent is Tenacia Technologies c/o Matthew Graves, Castle Rock, CO (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <googlejobs.net> and <googoljobs.com>,
registered with Primus Telco Pty Ltd. d/b/a Primusdomain/Planetdomain.
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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 9, 2003; the Forum received a hard copy of the Complaint
on June 10, 2003.
On
June 9, 2003, Primus Telco Pty Ltd. d/b/a Primusdomain/Planetdomain confirmed
by e-mail to the Forum that the domain names <googlejobs.net> and <googoljobs.com>
are registered with Primus Telco Pty Ltd. d/b/a Primusdomain/Planetdomain
and that Respondent is the current registrant of the names. Primus Telco Pty
Ltd. d/b/a Primusdomain/Planetdomain has verified that Respondent is bound by
the Primus Telco Pty Ltd. d/b/a Primusdomain/Planetdomain 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.net and postmaster@googoljobs.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 Sandra Franklin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googlejobs.net> and
<googoljobs.com> domain names are confusingly similar to
Complainant’s GOOGLE mark.
2. Respondent does not have any rights or
legitimate interests in the <googlejobs.net> and <googoljobs.com>
domain names.
3. Respondent registered and used the <googlejobs.net>
and <googoljobs.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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.net> and <googoljobs.com>
domain names on December 10, 2002 and February 25, 2003 respectively. Respondent’s <googlejobs.net>
domain name is used by employers to post job opportunities and provides job
search services to Internet users.
Respondent is passively holding the <googoljobs.com> domain
name.
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.
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.net>
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” and the generic top-level domain “net.” 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.net>
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. Furthermore,
the addition of the generic top-level domain “net” to the end of the domain
name is not sufficient to prevent the Panel from concluding that the disputed
domain name is confusingly similar to Complainant’s mark. 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 Rollerblade, Inc.
v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of
the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar).
Also,
Respondent’s <googoljobs.com> domain name is confusingly similar
to Complainant’s GOOGLE mark because the disputed domain name incorporates the
word “googol,” which is phonetically and visually similar to Complainant’s
GOOGLE mark. See Am. Online, Inc. v.
Peppler dba RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002)
(finding the word “quest” and “crest” to be similar in sound and,
thus, that Respondent’s <mapcrest.com>
domain name and Complainant’s MAP QUEST mark are
confusingly similar); see also YAHOO!
Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name
<yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights or a legitimate interest in the disputed domain
names.
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 chooses to presume
that Respondent lacks rights or a legitimate interest in the disputed domain
names 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).
In addition,
Respondent would be hard pressed to show that it has rights or legitimate
interests in the disputed domain names because they are confusingly similar to
Complainant’s well-known mark. 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 et al 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).
Furthermore,
Respondent has never acquired authorization from Complainant to use
Complainant’s mark and the record fails to establish that Respondent is
commonly known by the <googlejobs.net> and <googoljobs.com>
domain names. Therefore, Respondent
does not have rights or legitimate interests in the disputed domain names
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).
Also, the Panel
chooses to presume that Respondent has attempted to cause confusion for
Internet users and to commercially benefit from Complainant’s goodwill
associated with the GOOGLE mark by fully incorporating the mark into the <googlejobs.net>
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).
Finally,
Respondent is passively holding the <googoljobs.com> domain
name. The disputed domain name was
registered on February 25, 2003, and the record fails to show that Respondent
has made any demonstrable preparations to use it. Passive holding of a domain name without evidence of demonstrable
preparations to use it fails to establish rights or a legitimate interest in a
domain name. See Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, the Respondent had not used the domain names in connection with any
type of bona fide offering of goods and services); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question).
The Panel
concludes that Policy ¶ 4(a)(ii) has been satisfied.
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 in one of Respondent’s
disputed domain names. 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 <googlejobs.net> 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 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)).
Finally,
Respondent has passively held the <googoljobs.com> domain
name. Respondent’s passive holding is
evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is
possible, in certain circumstances, for inactivity by the Respondent to amount
to the domain name being used in bad faith”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
Respondent made no use of the domain name in question and there are no other
indications that Respondent could have registered and used the domain name in
question for any non-infringing purpose).
The Panel
concludes that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <googlejobs.net> and <googoljobs.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
July 25, 2003
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