Google Inc. v. Amcore & Company For
Sale Domains $250 or Best Offer.
Claim
Number: FA0405000267534
Complainant is Google Inc. (“Complainant”), represented by Rose A. Hagan, 1600
Amphitheatre Parkway, Mountain View, CA 94043.
Respondent is Amcore &
Company For Sale Domains $250 or Best Offer. (“Respondent”), 166 Sohrevardi Shomali Record building, Second
Floor, Tehren, Iran Postal District.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <googleme.com>, <googlepages.com>,
<googler.net>, <googlers.com>, <wwwgoogle.net> and
<goooglee.com>, registered with Bulkregister, LLC.
The
undersigned certifies that she has 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 National Arbitration Forum (the "Forum")
electronically May 3, 2004; the Forum received a hard copy of the Complaint May
3, 2004.
On
May 4, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the
domain names <googleme.com>, <googlepages.com>,
<googler.net>, <googlers.com>, <wwwgoogle.net> and
<goooglee.com> are registered with Bulkregister, LLC. and that
Respondent is the current registrant of the names. Bulkregister, LLC., verified
that Respondent is bound by the Bulkregister, LLC., registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 6, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 2004 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@googleme.com, postmaster@googlepages.com,
postmaster@googler.net, postamaster@googlers.com, postmaster@wwwgoogle.net, and
postmaster@goooglee.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
June 7, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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."
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.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <googleme.com>, <googlepages.com>,
<googler.net>, <googlers.com>, <wwwgoogle.net> and
<goooglee.com>, are confusingly similar to Complainant’s GOOGLE
mark.
2. Respondent has no rights to or legitimate
interests in the <googleme.com>, <googlepages.com>,
<googler.net>, <googlers.com>, <wwwgoogle.net>
and <goooglee.com> domain names.
3. Respondent registered and used the <googleme.com>,
<googlepages.com>, <googler.net>,
<googlers.com>, <wwwgoogle.net> and <goooglee.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Google, Inc., is a search engine created in 1997 by Stanford Ph.D. candidates
Larry Page and Sergey Brin.
Complainant’s primary website is located at <google.com>. The website has an index of some 3 billion
web pages and responds to more than 200 million search queries per day.
Complainant owns
the domain name register for <google.com>, registered September 15, 1997
that has identified Complainant’s website for the past six years.
Complainant is
the owner of United States Trademark Registration No. 2806075 for the mark
GOOGLE covering search and communication services in International Classes 38
and 42. Complainant is also the owner
of US trademark registration applications, including Application Serial No.
75-554461, filed September 16, 1998, covering computer hardware and software in
International Class 9.
Respondent
registered the <googleme.com>,
<googlepages.com>, <googler.net>,
<googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names March
13, 2001, July 19, 2000, February 11, 2002, November 1, 2000, February 11,
2002, and November 24, 2000, respectively.
Respondent uses
the domain names, with the exception of <googlee.com>,
which returns a DNS error page, in connection with a website that hosts a
different search engine providing links to a variety of websites and features a
variety of advertisements.
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
will draw such inferences as the Panel 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
established with extrinsic proof in this proceeding that it has rights in the
GOOGLE mark through its registration applications with the USPTO and by
continuous use of its mark in commerce for the last six years. 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 British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”)
The domain names
registered by Respondent are confusingly similar to Complainant’s GOOGLE mark
because the domain names incorporate Complainant’s mark in its entirety and
deviate from it only by the addition of generic or descriptive terms such as
“pages” and “me.” The mere addition of
a generic or descriptive word to a registered mark does not negate the
confusing similarity of Respondent’s domain names pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or term);
see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element); see also Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”).
Moreover, the domain
names registered by Respondent are confusingly similar to Complainant’s GOOGLE
mark because the domain names incorporate Complainant’s mark in its entirety
and deviate from it only by the addition of the letters “r,” “www,” or by
inserting an extra “o” and “e.” The
addition of a letter to a registered mark does not negate the confusing
similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see also 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 Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
names. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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); see
also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
Nov. 28, 2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <googleme.com>,
<googlepages.com>, <googler.net>,
<googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names to
redirect Internet users to a website that offers search engine services
identical to those offered by Complainant.
Respondent’s use of a domain name confusingly similar to Complainant’s
GOOGLE mark to redirect Internet users interested in Complainant’s services to
a website that offers a similar search engine is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that “it would be unconscionable to find a bona fide offering of
services in a respondent’s operation of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Am. Online Inc. v. Shenzhen JZT
Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that
Respondent’s operation of website offering essentially the same services as
Complainant and displaying Complainant’s mark was insufficient for a finding of
bona fide offering of goods or services).
Moreover,
Respondent has offered no evidence and no proof in the record suggests that
Respondent is commonly known by the disputed names. Respondent’s WHOIS domain
name registration information does not even suggest Respondent is commonly
known by the <googleme.com>,
<googlepages.com>, <googler.net>,
<googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see also 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).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain names to advertise its own search engine using domain
names that are identical to and confusingly similar to Complainant’s protected
mark. Respondent’s domain names divert
Internet users wishing to search under Complainant’s well-known mark to
Respondent’s website through the use of several domain names that are
confusingly similar to Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain,
through the use of confusingly similar domain names, evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). 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 Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site).
Furthermore,
Respondent registered the domain name for the primary purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website that directly attempts to compete with
Complainant. Registration of a domain
name for the primary purpose of disrupting the business of a competitor is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum
Dec. 23, 2000) (concluding that domain names were registered and used in bad
faith where Respondent and Complainant were in the same line of business in the
same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see also SR Motorsports v. Rotary Performance,
FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that
the domain names were registered for the primary purpose of disrupting the
competitor's business when the parties are part of the same, highly specialized
field).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <googleme.com>, <googlepages.com>,
<googler.net>, <googlers.com>, <wwwgoogle.net> and
<goooglee.com> domain names be TRANSFERRED from Respondent
to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
June 21, 2004
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