Google Inc. v. BIZEXTEND S.R.L. / Artur Caus
Claim Number: FA1508001632867
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, U.S.A. Respondent is BIZEXTEND S.R.L. / Artur Caus (“Respondent”), Moldova.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwords.md>, registered with MoldData S.E.
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. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2015; the Forum received payment on August 12, 2015. The Complaint was received in both Romanian and English.
On August 17, 2015, MoldData S.E. confirmed by e-mail to the Forum that the <adwords.md> domain name is registered with MoldData S.E. and that Respondent is the current registrant of the name. MoldData S.E. has verified that Respondent is bound by the MoldData S.E. 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 24, 2015, the Forum served the Romanian language Complaint and all Annexes, including a Romanian language Written Notice of the Complaint, setting a deadline of September 14, 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@adwords.md. Also on August 24, 2015, the Romanian language 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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 name be transferred from Respondent to Complainant.
Complainant
Complainant, Google Inc., provides online advertising services and uses the ADWORDS mark in connection with its services. Complainant owns the ADWORDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,794,616, registered December 16, 2003). The <adwords.md> domain name is identical to Complainant’s ADWORDS mark. The <adwords.md> domain name incorporates Complainant’s ADWORDS mark in full and adds the country code top-level domain (“ccTLD”) “.md.”
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain name or any name containing the ADWORDS mark. Complainant has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with or otherwise endorsed by Complainant. Respondent uses the disputed domain name to lead Internet users to incorrectly believe that it is Complainant’s genuine website in the Republic of Moldova, which demonstrates that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Further, Respondent is using the disputed domain name to pass itself off as Complainant for Respondent’s commercial gain.
Respondent has engaged in bad faith registration and use of the <adwords.md> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business, in violation of Policy ¶ 4(b)(iii). Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent had actual knowledge of Complainant’s mark and registered the disputed domain name in bad faith. Respondent attempts to pass itself off as Complainant, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <adwords.md> 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."
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.”).
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Romanian, thereby making the language of the proceedings in Romanian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Romanian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant, Google Inc., provides online advertising services and uses the ADWORDS mark in connection with its services. Complainant owns the ADWORDS mark through its registration with the USPTO (e.g., Reg. No. 2,794,616, registered December 16, 2003). Therefore, the Panel concludes that Complainant’s valid registration of the ADWORDS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i), even though Respondent reportedly operates in Moldova. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant asserts that the <adwords.md> domain name is identical to Complainant’s ADWORDS mark. The <adwords.md> domain name incorporates Complainant’s ADWORDS mark in full and adds the ccTLD “.md.” Past panels have held that the addition of a ccTLD is irrelevant to the analysis of Policy ¶ 4(a)(i). See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s ADWORDS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that there is no evidence, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain name or any name containing the ADWORDS mark. The WHOIS information for the disputed domain name lists “BIZEXTEND S.R.L. / Artur Caus” as the registrant of record. Complainant asserts that it has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with or otherwise endorsed by Complainant. As Respondent has not submitted any evidence to suggest otherwise, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant states that Respondent uses the disputed domain name to mislead Internet users to believe that it is Complainant’s genuine website in the Republic of Moldova, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website that offers to assist users in running their ads on Google, a service that competes with Complainant’s offerings. Past panels have refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to offer services that compete with a complainant. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent is using the disputed domain name to pass itself off as Complainant for commercial gain. Complainant alleges that Respondent’s resolving website mimics Complainant’s website, by using a font, layout, and content that is similar. Past panels have agreed that use of a confusingly similar domain name to mimic a complainant’s website does not give rise to rights or legitimate interests in the disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). The Panel therefore finds that Respondent’s passing off behaviors is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business, in violation of Policy ¶ 4(b)(iii). Complainant claims that Respondent’s disputed domain name is disruptive because it delays or impedes Complainant’s legitimate customers and potential customers from finding Complainant’s services. Past panels have agreed that offering competing services under a domain name that is identical to a complainant’s mark constitutes bad faith under 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 Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that, for commercial gain, Respondent intentionally attracts Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant states that Respondent commercially benefits from consumer confusion and profits from the goodwill associated with the ADWORDS mark. Past panels have found bad faith registration and use under Policy ¶ 4(b)(iv) where a disputed domain name is used to sell competing products and services. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges Respondent had actual knowledge of Complainant’s mark and registered the disputed domain name in bad faith. Complainant points to the fact that the disputed domain name resolves to a website that mimics the appearance of the genuine website for Complainant, as well as using the ADWORDS mark in the same stylization used by Complainant, which is evidence of Respondent’s actual knowledge. The Panel agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant contends that Respondent attempts to pass itself off as Complainant, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Complainant claims that Respondent includes the use of a similar font, layout, and content of Complainant’s official website. Past panels have found that passing off is additional evidence of bad faith per Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Therefore, the Panel finds Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <adwords.md> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 24, 2015
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