Google Inc. v. jerome gauthier / Goog-ad development LTD
Claim Number: FA1510001644533
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, California, USA. Respondent is jerome gauthier / Goog-ad development LTD (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goog-ad-development.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2015; the Forum received payment on October 29, 2015.
On October 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goog-ad-development.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 October 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@goog-ad-development.com. Also on October 30, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
A. Complainant
i) Complainant has rights in the GOOGLE mark through registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,140,793, registered September 12, 2006). Respondent’s disputed domain <goog-ad-development.com> is confusingly similar to the GOOGLE mark. Respondent’s domain removes the letters “le” from Complainant’s mark, adds two hyphens, the generic terms “ad” and “development,” and the generic top-level domain (“gTLD”) “.com.” These differences do not create a domain that is distinguished from Complainant’s GOOGLE mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been affiliated with Complainant, been authorized to use Complainant’s marks in any manner, or been commonly known by the disputed domain name prior to registration. Further, Respondent’s use of the disputed domain name, to pose as Complainant while sending misleading emails, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent impersonating Complainant in emails demonstrates bad faith through competing and disrupting Complainant’s business. Additionally, Respondent’s registration and use of the domain indicates an intent to attract Internet users for commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark at the time of registration.
B. Respondent
Respondent has not submitted a Response in this Proceeding. The Panel notes that the disputed domain name was created on June 11, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant claims that its rights in the GOOGLE mark stem from registration with multiple trademark agencies throughout the world including with the USPTO (e.g., Reg. No. 3,140,793, registered September 12, 2006). Id. Panels have routinely concluded that registration with the USPTO is sufficient to demonstrate a complainant’s rights in the mark. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). The Panel concludes that Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <goog-ad-development.com> domain name is confusingly similar to the GOOGLE mark. The disputed domain name differs from the mark through the removal of the letters “le,” the addition of two hyphens, the generic words “ad” and “development,” and the gTLD “.com.” The presence of the gTLD “.com” has been considered irrelevant when determining confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Prior panels have also held that misspelling a word does not prevent a finding of confusing similarity. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). Additionally, the introduction of generic terms has not been found to reduce the similarity between a mark and a domain name. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Finally, hyphens have not been seen as a distinguishing feature when added to a mark in a domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel may thus conclude that Respondent’s disputed domain is confusingly similar to the GOOGLE mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the disputed domain name. In support of this contention, Complainant claims that Respondent has not been affiliated with Complainant, been authorized to use Complainant’s marks in any manner, or been commonly known by the disputed domain name prior to registration. While WHOIS information indicates that Respondent identifies as “jerome guathier,” of “Goog-ad development LTD,” prior panels have held that a respondent is not commonly known by a disputed domain name despite WHOIS information. See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”). As the Panel determines that there is a lack of evidence to verify that Respondent is commonly known by the disputed domain it holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the domain name and emails associated with the domain to pose as an employee of Complainant and sell Complainant’s advertising services. Previous panels have found that an attempt to pass oneself of as a complainant for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). The Panel thus finds that Respondent’s use of the disputed domain name does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii).
Complainant believes that Respondent has registered and is using the disputed domain name in bad faith. In connection with this belief, Complainant alleges that Respondent competes and disrupts Complainant’s business. Respondent appears to use the disputed domain to pose as Complainant and send business solicitation emails to internet users. When determining whether a respondent has disrupted or competed with a complainant prior panels have defined the term “competitor” broadly. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). As the Panel determines that Respondent has acted in opposition to the Complainant through illegitimate use of the disputed domain name, it concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent is attempting to confuse and attract Internet users for commercial profit. Again, Respondent’s only apparent use of the disputed domain name appears to be sending emails soliciting money from users who are seeking advertising services. In these emails Respondent prominently displays the GOOGLE mark in text form. Id. Bad faith under Policy ¶ 4(b)(iv) has been found where a respondent used another’s mark for the purposes of attracting internet users for commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The Panel finds that Respondent is using the GOOGLE mark to attract and confuse internet users for commercial gain and has thus demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE mark, it is inconceivable that Respondent could have registered the <goog-ad-development.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel, however, infers from the fame and notoriety of the Complainant’s mark and the manner of use of the disputed domain name by Respondent 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goog-ad-development.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 1, 2015
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