Google Inc. v. Monika Patel
Claim Number: FA1602001661784
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States. Respondent is Monika Patel (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adsenseviet.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2016; the Forum received payment on February 19, 2016.
On February 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adsenseviet.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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2016 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@adsenseviet.com. Also on February 22, 2016, 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 March 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 Contentions:
1. Complainant uses the ADSENSE mark in connection with its ad placement service. Complainant registered the ADSENSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,881,856, registered on September 7, 2004), which demonstrates rights in a mark. The Panel is directed to Attached Annex 9 for a copy of Complainant’s USPTO registration. Respondent’s <adsenseviet.com> domain name is confusingly similar to the ADSENSE mark as it incorporates the mark in its entirety while adding the geographical descriptor “Viet” and the generic top-level domain (“gTLD”) “.com”.
2. Respondent has no rights or legitimate interests in the <adsenseviet.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <adsenseviet.com> domain name. Rather, the domain name resolves to a website purporting to advertise the commercial services of “AdSense VieTnam,” which directs to users of Complainant’s AdSense service. In addition, the domain name resolves to a website that contains hyperlinks to Internet-related services of competing companies.
3. Respondent is using the <adsenseviet.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent had actual notice of the ADSENSE mark and Complainant’s rights therein because of the mark’s fame, notoriety, and multiple trademark registrations. In addition Respondent showed opportunistic bad faith because the domain name is so obviously connected to a well-known name and product.
B. Respondent Contentions:
1. Respondent did not submit a response.
1. Respondent’s <adsenseviet.com> domain name is confusingly similar to Complainant’s ADSENSE mark.
2. Respondent does not have any rights or legitimate interests in the <adsenseviet.com> domain name.
3. Respondent registered or used the <adsenseviet.com> 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(f), 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 the ADSENSE mark in connection with its ad placement service. Complainant registered the ADSENSE mark with the USPTO (Reg. No. 2,881,856, registered on September 7, 2004), arguing that such registrations demonstrate rights in its mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel therefore agrees that Complainant has satisfactorily demonstrated its rights in the ADSENSE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <adsenseviet.com> domain name is confusingly similar to the ADSENSE mark as it incorporates the mark in its entirety, merely adding the geographic term “Viet” and the “.com” gTLD. Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gannett Co. v. Chan, D2004-0017 (WIPO Apr. 8, 2004) (“… it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark”). Therefore, the Panel agrees that Respondent’s <adsenseviet.com> domain name is confusingly similar to the ADSENSE 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 argues that Respondent has no rights or legitimate interests in the <adsenseviet.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. In addition, Complainant has not authorized Respondent to register or use the disputed domain name, or the ADSENSE mark. The WHOIS information regarding the disputed domain name, lists “Monika Patel” as the registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <adsenseviet.com> domain name. Rather, Complainant contends that the domain name resolves to a website purporting to advertise the commercial services of “AdSense Vietnam,” which directs to users of Complainant’s AdSense service. In addition, Complainant alleges that the domain name resolves to a website that contains hyperlinks to Internet-related services of competing companies. Panels have found such use by a respondent evinces neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Michelin North America v. Registrarads, Inc., FA 1628283 (Nat. Arb. Forum Aug. 24, 2015) (holding that respondent’s use of michelin-group.com to host a website that displays advertisements of complainant’s competitors was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, this Panel agrees that Respondent’s <adsenseviet.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Complainant argues that Respondent’s use of <adsenseviet.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the offering of competing services and advertising the competing services of others through hyperlinks. Panels have agreed where a respondent has purported to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Microsoft Corporation v. N/A / Bellany Charles, FA 1448349 (Nat. Arb. Forum Jul. 23, 2012) (finding registration and use in bad faith where respondent used the domain name in question “to offer the download of competing computer safety software”, thereby disrupting complainant’s business); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, this Panel agrees that Respondent’s <adsenseviet.com> domain name falls within the purview of Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that a likelihood of confusion exists because the domain name resolves to a webpage that displays competing services. Prior panels have found that the use of a domain name in such a manner can amount to bad faith under Policy ¶4(b)(iv). 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). Therefore, the Panel holds that Respondent has created a likelihood of confusion for profit, thus establishing bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s ADSENSE mark, it is inconceivable that Respondent could have registered the <adsenseviet.com> domain name without actual knowledge of Complainant’s rights in the mark. The Panel agrees 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 UNIVISON 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 <adsenseviet.com> domain name be TRANSFERRED from Respondent to Complainant
John J. Upchurch, Panelist
Dated: March 31, 2016
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