Google Technology, Inc. v. MediaMatch
S.L.
Claim Number: FA0308000183907
Complainant is Google Technology, Inc., Mountain
View, CA (“Complainant”) represented by Rose
A. Hagan. Respondent is MediaMatch
S.L., Girona, Spain (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sexogoogle.com> registered with Gandi.
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 August 13, 2003; the Forum received a hard copy of the Complaint
on August 20, 2003.
On
August 21, 2003, Gandi confirmed by e-mail to the Forum that the domain name <sexogoogle.com>
is registered with Gandi and that Respondent is the current registrant of the
name. Gandi has verified that Respondent is bound by the Gandi 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
August 22, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 11, 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@sexogoogle.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
September 22, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sexogoogle.com>
domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or
legitimate interests in the <sexogoogle.com> domain name.
3. Respondent registered and used the <sexogoogle.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
produced evidence of trademark applications with the United States Patent and
Trademark Office (“USPTO”) for the GOOGLE mark, including Ser. No. 75/978,469
(filed on September 16, 1999) related to computer services. Complainant has
also produced evidence of trademark registrations for the GOOGLE mark in
various countries throughout the world.
Complainant has
used the <google.com> domain name since September 15, 1997 to provide a
search engine website.
Respondent
registered the <sexogoogle.com> domain name on May 9, 2002.
Respondent is using the disputed domain name as a search engine for
pornographic material.
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 rights in the GOOGLE mark through its pending trademark
applications with the USPTO and its current trademark registrations in
countries throughout the world. See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that Complainant's trademark or service
mark be registered by a government authority or agency for such rights to
exist. Rights in the mark can be
established by pending trademark applications); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which Respondent operates. It is
sufficient that Complainant can demonstrate a mark in some jurisdiction).
Complainant
contends that the <sexogoogle.com> domain name is confusingly
similar to the GOOGLE mark because the disputed domain name appropriates
Complainant’s entire mark and adds the word “sexo” to the beginning of the mark.
The Spanish word “sexo” translates to the English word “sex.” The addition of a
generic term such as “sexo” does not sufficiently differentiate Respondent’s <sexogoogle.com>
domain name from Complainant’s GOOGLE mark for purposes of Policy ¶ 4(a)(i). See Yahoo! Inc. and GeoCities v. Zuccarini,
D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple
domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and
GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to
be confusingly similar to Complainant’s marks and likely to mislead Internet
users into believing that products and services offered by Respondents are
being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the
names and products and services offered); see also Pfizer, Inc. v. Papol
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject
domain name incorporates the VIAGRA mark in its entirety, and deviates only by
the addition of the word “bomb,” the domain name is rendered confusingly
similar to Complainant’s mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
failed to respond in this proceeding. Thus, the Panel deems all reasonable
allegations and inferences in the Complaint to be true. See Bayerische
Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a Response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Moreover, based
on Respondent’s failure to respond to Complainant’s allegations, the Panel
presumes Respondent has no rights to or legitimate interests in the disputed
domain name. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a Response or provided the Panel with evidence to suggest otherwise);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Respondent is
using the website at the <sexogoogle.com> domain name for a search
engine for pornographic websites. Respondent’s use of a domain name confusingly
similar to Complainant’s GOOGLE mark to provide pornographic search services
does not demonstrate 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). See
Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov.
15, 2002) (holding that the use of a domain name that is confusingly similar to
an established mark to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that infringing on another's well-known mark to provide
a link to a pornographic site is not a legitimate or fair use).
Furthermore,
Respondent has produced no evidence and there is no indication in the record
that Respondent is commonly known by SEXOGOOGLE or <sexogoogle.com>.
Therefore, Respondent has failed to manifest any rights to or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s use
of the <sexogoogle.com> domain name, a domain name confusingly
similar to Complainant’s mark, to connect Complainant with websites that
contain pornographic material itself establishes bad faith registration and use
of the domain name for purposes of Policy ¶ 4(a)(iii). See Six Continents
Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“whatever the
motivation of Respondent, the diversion of the domain name to a pornographic
site is itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith”); see also CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (“this association with a pornographic web site can itself
constitute bad faith”).
Moreover, the
Panel presumes that Respondent is operating the website at the <sexogoogle.com>
domain name for financial profit. The use of a domain name confusingly similar
to Complainant’s GOOGLE mark to create a likelihood of confusion with
Complainant’s mark for commercial gain constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See 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)); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name <bigtex.net>
to infringe on Complainant’s goodwill and attract Internet users to
Respondent’s website).
The Panel finds
that Complainant has established 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 <sexogoogle.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
October 3, 2003
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