Google Inc. v. Ewelina Wroblewska
Claim Number: FA1607001683907
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, Washington D.C., United States. Respondent is Ewelina Wroblewska (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <suchmaschinenoptimierung-google.net>, <suchmaschinenmarketing-google.net>, <onlinemarketing-google.net>, <google-suchmaschinenoptimierung.net>, and <seoweb-google.com>, registered with Name.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically July 14, 2016; the Forum received payment July 14, 2016.
On July 18, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <suchmaschinenoptimierung-google.net>, <suchmaschinenmarketing-google.net>, <onlinemarketing-google.net>, <google-suchmaschinenoptimierung.net>, and <seoweb-google.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. verified that Respondent is bound by the Name.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@suchmaschinenoptimierung-google.net, postmaster@suchmaschinenmarketing-google.net, postmaster@onlinemarketing-google.net, postmaster@google-suchmaschinenoptimierung.net, and postmaster@seoweb-google.com. Also on July 26, 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 August 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.
Complainant, in connection with its GOOGLE mark, offers a wide range of Internet-related products and services, including Internet search and online advertising services, such as its AdWords service. See Compl., at Attached Annex 6. Complainant registered its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sept. 14, 2004), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Annex 11. The domains are confusingly similar to Complainant’s GOOGLE mark as they wholly incorporate the mark and merely add a hyphen, generic terms in either English or German, and/or the “.net” or “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domains. Respondent is not commonly known by the domains, and Respondent has not been authorized by Complainant to register or use the domains. Further, Respondent is not using the domains in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domains resolve to websites that promote Respondent’s own alleged Internet advertising services. See Compl., at Attached Annexes 12–13. Moreover, Respondent’s websites falsely represent that the promoted company is a “Certified Partner” of Complainant, and Complainant urges that the domains that Respondent registered are associated by numerous consumers online with spam e-mail and a marketing scam. See Compl., at Attached Annex 14.
Respondent registered and is using the domains in bad faith. First, Respondent’s registration of multiple domains in the current proceeding constitutes a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). Second, Respondent’s use of the domains to promote services that compete directly with Complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iv). Finally, given the fame and extensive media coverage of Complainant and its mark, and its trademark filings, it is clear that Respondent registered the domains with at least constructive knowledge of Complainant’s GOOGLE mark. See Compl., at Attached Annexes 8–11.
Respondent’s Contentions
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <suchmaschinenoptimierung-google.net> domain July 21, 2015, the <suchmaschinenmarketing-google.net> domain December 7, 2015, the <onlinemarketing-google.net> domain February 15, 2016, the <google-suchmaschinenoptimierung.net> domain October 12, 2015, and the <seoweb-google.com> domain November 5, 2015.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names.
Respondent has no such rights or legitimate interests in the mark or domain names containing it.
Respondent registered domain names that are confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant, in connection with its GOOGLE mark, offers a wide range of Internet-related products and services, including Internet search and online advertising services, such as its AdWords service. See Compl., at Attached Annex 6. Complainant registered its GOOGLE mark with the USPTO (e.g., Reg. No. 2,884,502, registered Sept. 14, 2004), which Complainant argues demonstrates its rights in the mark. See Compl., at Attached Annex 11. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), even where geographic disparity exists between the parties such as here. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). Thus, the Panel finds that Complainant established rights and legitimate interests in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the domains are confusingly similar to Complainant’s GOOGLE mark as they wholly incorporate the mark and merely add a hyphen, generic terms in either English or German, and/or the “.net” or “.com” gTLD. Neither addition of a hyphen, nor addition of generic terms, distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Further, affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered domain names that are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 domains. Complainant asserts that Respondent is not commonly known by the domains and that Complainant has not authorized Respondent to register or use its protected mark in the domains. The Panel notes that the WHOIS information merely lists “Ewelina Wroblewska” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. See Compl., at Attached Annex 4. For these reasons, the Panel finding no basis in the available record to find Respondent commonly known by the disputed domain names, finds that Respondent is not commonly known by the disputed domain names, pursuant to a Policy ¶ 4(c)(ii) analysis. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Complainant contends that Respondent is not using the domains in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, according to Complainant, the domains resolve to websites that promote Respondent’s own alleged Internet advertising services. See Compl., at Attached Annexes 12 and 13. Moreover, Complainant claims that Respondent’s websites falsely represent that the promoted company is a “Certified Partner” of Complainant, and that numerous consumers on line associate Respondent’s domains with spam e-mail and a marketing scam. A respondent’s use of a domain to either promote competing products and/or services, or to engage in fraudulent activity, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (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) and it is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); cf. Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s registration of multiple domains in the current proceeding constitutes a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). A respondent’s registration of multiple domains in one proceeding is evidence of bad faith. See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Thus, the Panel finds that Respondent registered multiple domains using Complainant’s protected mark without permission and therefore registered and is using the domains in bad faith pursuant to INCANN Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s use of the domains to promote services that compete directly with Complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iv). A respondent’s use of a domain to promote products and/or services that compete directly with a complainant’s business constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent engaged in bad faith registration and use under a Policy ¶ 4(b)(iv) analysis.
Finally, Complainant contends that given the fame and extensive media coverage of Complainant and its mark, and its trademark filings, it is clear that Respondent registered the domains with at least constructive knowledge of Complainant’s GOOGLE mark. See Compl., at Attached Annexes 8–11. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that the Complainant’s mark is well-known internationally and it is further apparent from the mark’s use in this group of emails that Respondent had actual knowledge of Complainant's mark and rights and therefore the Panel finds that Respondent had actual knowledge of Complainant’s rights in its mark and registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Further, Respondent concedes this knowledge when it claims to have Complainant’s certification, which Respondent does not have.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suchmaschinenoptimierung-google.net>, <suchmaschinenmarketing-google.net>, <onlinemarketing-google.net>, <google-suchmaschinenoptimierung.net>, and <seoweb-google.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 8, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page