Google Inc. v. Cencom Inc.
Claim Number: FA0603000669284
Complainant is Google Inc. (“Complainant”), 1600 Amphitheatre Parkway, Mountain View, CA 94043. Respondent is Cencom Inc. (“Respondent”), 2800 Northup Way #200, Bellevue, WA 98004.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <securitygoogle.com>, registered with Go Daddy Software, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2006.
On March 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <securitygoogle.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 2006 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@securitygoogle.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <securitygoogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <securitygoogle.com> domain name.
3. Respondent registered and used the <securitygoogle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is one of the world’s largest, most highly recognized and most widely used Internet search services. Since 1997, Complainant has operated a search engine website at the <google.com> domain name (registered on September 15, 1997) that today has an index of over eight billion web pages. In January 2006, Nielsen NetRankings ranked Complainant’s website third in a list of the Top 10 Parent Companies for work Internet users and fourth in a list of the Top 10 Parent Companies for home Internet users.
Complainant is the owner of numerous trademark registrations for the GOOGLE mark around the world, and has registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,806,075 issued January 20, 2004; Reg. No. 2,884,502 issued September 14, 2004; Reg. No. 2,954,071 issued May 24, 2005).
Respondent registered the disputed domain name on November 10, 2004. Respondent’s domain name resolves to a commercial website displaying the phrase, “Your Security Search Engine for Alarm & Security Services.” The website also displays Complainant’s GOOGLE mark, including its distinctive logo, at the top of the page. The website features links to various alarm and security companies.
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. 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.”).
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 rights to the GOOGLE mark by
registering the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Respondent’s <securitygoogle.com> domain name is
confusingly similar to Complainant’s GOOGLE mark because it contains the entire
mark and merely adds the generic term “security” to the front of the mark. In Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000), the
respondent registered numerous domain names adding generic terms to the
complainant’s GEOCITIES and YAHOO! marks, and the panel found that the respondent’s
domain names were confusingly similar to the distinctive marks because the
domain names were “likely to mislead Internet users into believing that
products and services offered by the respondents are being sponsored or
endorsed by [Complainant].” Therefore, Respondent’s <securitygoogle.com> domain name is confusingly similar to
Complainant’s GOOGLE mark. See Yahoo! Inc. v. Casino Yahoo, Inc.,
D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name
<casinoyahoo.com> is confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <securitygoogle.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <securitygoogle.com> domain
name. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1,
2000) (“By its default, Respondent has not contested the allegation . . . that
the Respondent lacks any rights or legitimate interests in the domain
name. The Panel thus assumes that there
was no other reason for the Respondent having registered
<bancodobrasil.com> but the presumably known existence of the Complainant´s
mark BANCO DO BRASIL”); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Cencom Inc.,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <securitygoogle.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <securitygoogle.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Furthermore, Respondent’s <securitygoogle.com> domain name, which is confusingly similar to Complainant’s GOOGLE mark, resolves to a commercial website featuring links to various alarm and security companies unrelated to Complainant. The website also prominently displays Complainant’s GOOGLE mark. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the respondent registered <seiko.net>, which was identical to the complainant’s SEIKO mark, and was redirecting Internet users to a third-party website unrelated to the mark. The panel stated that “[d]iverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” Therefore, Respondent’s use of the disputed domain name to intentionally divert Internet users seeking Complainant’s products and services under the GOOGLE mark to an unrelated website for its own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <securitygoogle.com> domain name, which includes Complainant’s
GOOGLE mark, to redirect Internet users seeking Complainant’s products and
services to an unrelated website with links to alarm and security
products. Respondent likely receives
referral fees for each consumer it diverts to this website and via links on the
website. Therefore, Respondent is
taking advantage of the confusing similarity between the <securitygoogle.com> domain name and Complainant’s GOOGLE
mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this
purpose is indicative of bad faith registration and use under 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 the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain);
see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding that the respondent violated Policy ¶
4(b)(iv) because the respondent admittedly used the complainant’s well-known
mark to attract users to the respondent's website).
Moreover, Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the <securitygoogle.com>
domain name resolves to a search engine site similar to the website Complainant
operates under its GOOGLE mark at the <google.com> domain name. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel
found that the respondent had registered and used the <euro-disney.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to
a website promoting a competing theme park.
Here, then, Respondent’s use of
the disputed domain name to operate a search engine website that prominently
displays Complainant’s GOOGLE mark provides evidence that it registered the
domain name primarily to disrupt Complainant’s business in violation of 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 the respondent and the
complainant were in the same line of business in the same market area).
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 <securitygoogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 8, 2006
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