Google Inc. v. Free Communication Foundation
Claim Number: FA0604000690794
Complainant is Google Inc. (“Complainant”), 1600 Amphitheatre Parkway, Mountain View, CA 94043. Respondent is Free Communication Foundation (“Respondent”), Tsar Osvoboditel Blvd 4, Sofia 1504, Bulgaria.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mp3google.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2006.
On April 26, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <mp3google.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 April 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 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@mp3google.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <mp3google.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <mp3google.com> domain name.
3. Respondent registered and used the <mp3google.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., has continuously operated a search engine at the <google.com> domain name since September 15, 1997. Complainant is one of the world’s largest, most highly recognized and most widely used Internet search engines. Complainant’s search engine under the GOOGLE mark contains an index of over eight billion web pages. In January 2006, Nielsen NetRankings ranked Complainant as number three in a list of the Top 10 Parent Companies for work Internet users and as number four for home Internet users.
Complainant has registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,806,075 issued January 20, 2004, filed September 16, 1999; Reg. No. 2,884,502 issued September 14, 2004, filed September 16, 1998). Complainant also owns numerous trademark registrations for the GOOGLE mark with government authorities worldwide, including the Commonwealth of Australia Trade Marks Office (Reg. No. 788,234 issued March 12, 1999), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA539,576 issued January 12, 2001) and the Japanese trademark authority (Reg. No. 4,478963 issued June 1, 2001).
Respondent registered the <mp3google.com> domain name on July 21, 2001. Respondent is currently operating a search engine website at the disputed domain name in direct competition with Complainant. At one time, Respondent used the disputed domain name to operate a commercial website offering music search engine services that prominently displayed Complainant’s GOOGLE mark and the slogan “Music Megasearch.”
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 demonstrated its rights in the GOOGLE mark through registration of the mark with numerous trademark authorities worldwide, including the Australian, Canadian and Japanese trademark authorities, before Respondent registered the <mp3google.com> domain name in 2001. Additionally, Complainant filed for a trademark registration with the USPTO as early as 1998, and thus its rights to the GOOGLE mark predate Respondent’s registration of the <mp3google.com> domain name pursuant to Policy ¶ 4(a)(i). 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 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 the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <mp3google.com> domain name is
confusingly similar to Complainant’s GOOGLE mark because it fully incorporates
the mark and merely adds a common term to the beginning of the mark. In Yahoo! Inc. v. Zuccarini,
D2000-0777 (WIPO Oct. 2, 2000), the respondent registered numerous domain names
adding common 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 mere addition of the term “mp3” to Complainant’s
GOOGLE mark in the <mp3google.com> domain name renders the domain
name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <mp3google.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the <mp3google.com>
name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). 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 disputed domain name under the name “Free Communication Foundation,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <mp3google.com> domain name. As a result, Respondent has not established rights 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 the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent is using the <mp3google.com>
domain name, which includes Complainant’s GOOGLE mark, to operate a commercial
search engine website that competes with Complainant’s search engine website at
the <google.com> domain name.
Respondent has also used the disputed domain name in the past to operate
a commercial website displaying Complainant’s GOOGLE mark and offering music
search engine services. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel
found that the respondent’s use of a domain name to divert Internet users to a
website selling goods and services similar to the services offered by the
complainant was not 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). Because Respondent
is also diverting Internet users seeking Complainant’s search engine services
to its own website offering similar services for commercial gain, Respondent’s
past and present uses of the disputed domain name do 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 <mp3google.com> domain
name pursuant to Policy ¶ 4(c)(iii). See
Am. Online, Inc. v. Tencent
Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use
of the complainant’s mark “as a portal to suck surfers into a site sponsored by
[the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent is using the <mp3google.com>
domain name to operate a search engine website offering services similar to
those offered by Complainant at its own search engine website, and has in the
past displayed Complainant’s GOOGLE mark on its website in connection with a
music search engine service, Respondent has registered and used the disputed
domain name for the primary purpose of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent).
Furthermore, Respondent has registered and is using the <mp3google.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract, for commercial gain, Internet users to its own search
engine website that competes with Complainant’s search engine website under the
GOOGLE mark. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000),
the panel found that the respondent’s use of the <identagene.com> domain
name, which was confusingly similar to the complainant’s IDENTIGENE mark, to
operate a website offering Internet users similar services as the complainant
constituted bad faith registration and use because it was likely to cause
consumer confusion as to the source or sponsorship of the services offered at
the domain name. Likewise, Respondent is taking advantage of
consumer confusion as to the source, affiliation, sponsorship or endorsement of
the disputed domain name and profiting from the goodwill associated with the
GOOGLE mark. Therefore, Respondent’s
use of the disputed domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the
domain name at issue to resolve to a website at which Complainant’s trademarks
and logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”).
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 <mp3google.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 5, 2006
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