Google Inc. v. GOOGLE REKLAM EK?B? / GOOGLE REKLAM
Claim Number: FA1501001602374
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, District of Columbia, USA. Respondent is GOOGLE REKLAM EK?B? / GOOGLE REKLAM (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlereklamekibi.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2015; the National Arbitration Forum received payment on January 28, 2015.
On January 30, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <googlereklamekibi.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 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 firstname.lastname@example.org. Also on January 30, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" 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 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.
Complainant contends as follows:
Complainant owns the GOOGLE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Complainant has numerous other registrations for the GOOGLE mark worldwide.
Complainant uses the GOOGLE mark in connection with its search engine technology, associated products and services, and a broad range of keyword and online advertising services.
The <googlereklamekibi.com> domain name is confusingly similar to the GOOGLE mark. The domain name incorporates the mark in full, adds the wording “reklam ekibi,” which is translated from Turkish to English as “advertising team,” and inserts the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Although WHOIS information for the <googlereklamekibi.com> domain name and resolving website identify “Google Reklam Ek?b?” and “Google Reklam Ekibi” as the registrant of record, Respondent has chosen this name to imply that its services are performed by Complainant or by Complainant’s affiliate in Turkey. However, Complainant has not authorized Respondent to register or use the domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant. Respondent’s lack of rights or legitimate interests in the <googlereklamekibi.com> domain name is also evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and that Respondent has not made a legitimate noncommercial or fair use of the domain name. Respondent’s domain name diverts Internet users who are seeking Complainant’s website, and Respondent’s offered services compete directly with Complainant’s Internet advertising services.
Respondent has engaged in bad faith registration and use of the <googlereklamekibi.com> domain name. The domain name addresses a website that purports to offer Internet advertising, keyword advertising, and search engine optimization services, and prominently features Complainant’s GOOGLE, ADWORDS, and GOOGLE ADWORDS marks. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users to Respondent’s website. Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Further, Respondent had actual knowledge of Complainant’s rights in the mark, which signals bad faith registration. Finally, as the disputed domain name is connected to a well-known company, its use by Respondent suggests opportunistic bad faith under Policy ¶ 4(a)(iii).
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOOGLE mark through its registration of such mark with the USPTO, as well as via its other worldwide trademark registrations.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website that purports to offer Internet advertising, keyword advertising, and search engine optimization services, and prominently features Complainant’s GOOGLE, ADWORDS, and GOOGLE ADWORDS marks.
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 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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the GOOGLE trademark, as well as its other worldwide registrations, demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrars. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); 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).
Respondent forms the at-issue domain name by adding the terms “reklam ekibi” ‑which translates from Turkish to English as “advertising team”‑ to Complainant’s GOOGLE mark and then appending the generic top-level domain name “.com.” to the resulting string. Adding descriptive words to a trademark does nothing to distinguish the <googlereklamekibi.com> domain name from the Complainant’s trademark, particularly when one of the added terms suggests Complainant’s advertising business. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Furthermore, suffixing the top-level domain name does nothing to distinguish the at-issue domain name from Complainant’s registered trademark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. 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 concludes that the Respondent’s <googlereklamekibi.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Google Reklam Ek?b?” as the domain name’s registrant. The website addressed by the domain name identifies “Google Reklam Ekibi” as the registrant. Although such names are similar to Respondent’s domain name, there is nothing in the record that otherwise suggests Respondent is commonly known as <googlereklamekibi.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s at-issue domain name diverts Internet users who are seeking Complainant’s website; Respondent’s offered services compete directly with Complainant’s Internet advertising services. Respondent’s use of the domain name to divert Internet users to its own website for profit is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. 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) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above, Respondent’s <googlereklamekibi.com> website offers services that are competitive with those offered by Complainant. Using the domain name to address such website confounds Complainant’s customers and potential customers in their attempts to find Complainant’s legitimate services online. Respondent’s use of the at-issue domain name is thus inherently disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Next, Respondent uses the confusingly similar <googlereklamekibi.com> domain name to attract Internet users to its website for commercial gain. As mentioned above the <googlereklamekibi.com> website offers competing services. These services include Internet advertising, keyword advertising, and search engine optimization. Using the domain name in this manner demonstrates bad faith registration and use of the <googlereklamekibi.com> domain name according to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Finally, Respondent registered the <googlereklamekibi.com> domain name knowing that Complainant had trademark rights in the GOOGLE mark. Respondent’s prior knowledge is evident because of the high notoriety of Complainant’s trademark and from Respondent’s use of Complainant’s trademarks on the <googlereklamekibi.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <googlereklamekibi.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlereklamekibi.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 25, 2015
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