Google Inc. v. Patrick Babaian
Claim Number: FA0708001060992
Complainant is Google Inc. (“Complainant”), represented by Matthew
D. Schneller, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com>, registered with Wild West Domains, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2007.
On August 13, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2007 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@googledatadrive.com, postmaster@googlenetstorage.com, postmaster@googlewebdrive.com, postmaster@googlewebstorage.com, postmaster@mygoogledrive.com, and postmaster@mygooglestorage.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com> domain names.
3. Respondent registered and used the <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is one of the largest and most highly recognized Internet search engines. Complainant has used the GOOGLE mark in commerce since 1997 to promote its online services, and holds numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (i.e. Reg. No. 2,806,075 issued Jan. 20, 2004).
Respondent, Patrick Babaian,
registered the disputed domain names on March 10, 2006. Respondent is using the <mygooglestorage.com> and <mygoogledrive.com> domain
names to redirect Internet users to <mozy.com>, which offers “unlimited
automatic secure storage” in competition with Complainant. Respondent is not making any use of the <googledatadrive.com>,
<googlenetstorage.com>, <googlewebdrive.com>, and <googlewebstorage.com>
domain names.
Complainant
notes that in early March 2006, Complainant publicly released a slide
presentation indicating that it would be releasing an online storage service
commonly referred to as “Gdrive” or “
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.
In accordance with previous panels, the Panel finds that Complainant has successfully established rights in the GOOGLE mark through its USPTO registered trademark, and its longstanding, widespread use of the mark in commerce. See Google, Inc. v. Mosspot, FA 547780 (Nat. Arb. Forum Nov. 3, 2005) (“Based on the uncontroverted evidence submitted by Complainant, the Panel finds that Complainant has rights in the GOOGLE mark that arise from both the use in commerce and the registration of the mark with the United States Patent and Trademark Office (‘USPTO’).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The disputed domain names all contain Complainant’s GOOGLE mark in its entirety and add the generic top-level domain (“gTLD”) “.com.” Two of the disputed domain names add the generic word “my,” and all of the disputed domain names variably add the generic words “web,” “data,” “drive,” and “storage” that have an obvious relationship to Complainant’s business. The Panel finds that Complainant’s GOOGLE mark remains the dominant portion of the disputed domain names, especially in lieu of the corresponding generic words that describe Complainant’s business. Furthermore, the additions of “my” and “.com” do not sufficiently distinguish the disputed domain names from Complainant’s mark. Consequently, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. 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 under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Patrick Babaian,” and the Panel can find no other evidence in the record that Respondent might be commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <mygooglestorage.com> and <mygoogledrive.com> domain
names to redirect Internet users to <mozy.com>, which offers “unlimited
automatic secure storage” in competition with Complainant. An e-mail correspondence sent from Respondent
to Complainant indicates that Respondent generates revenue from its
diversionary use of the aforementioned disputed domain names. The Panel finds that Respondent’s use of
these disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where services
that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because the respondent used the names to divert
Internet users to a website that offered services that competed with those
offered by the complainant under its marks).
Respondent
is not making any use of the <googledatadrive.com>, <googlenetstorage.com>,
<googlewebdrive.com>, and <googlewebstorage.com>
domain names. The Panel thus finds that
Respondent is not using these disputed domain names in connection with a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).”); see also Am.
Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003)
(“Respondent's passive holding of the <aolfact.com> domain name for over
six months is evidence that Respondent lacks rights and legitimate interests in
the domain name.”).
Complainant has alleged that
Respondent offered to sell the disputed domain names to Complainant for
$54,000, and then lowered the asking price to $28,257.95. However, Respondent admitted in the e-mail correspondence
presented as evidence by Complainant that the domain registration fees were at
most $214.80. This evidence clearly
indicates that Respondent was attempting to sell the disputed domain names to
Complainant, the rightful owner of the GOOGLE mark, for an amount well
in-excess of Respondent’s out-of-pocket costs.
The Panel therefore finds that Respondent lacks rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See
Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a
domain name to a complainant who owns a trademark with which the domain name is
confusingly similar for an amount in excess of out-of-pocket costs has been
held to demonstrate a lack of legitimate rights or interests.”); see also George Weston
Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a
“disproportionate” offer to sell its domain name registration to the
complainant for more than its out-of-pocket registration costs, there is
additional evidence that the respondent lacks rights and legitimate interests
in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The record demonstrates that Respondent offered to sell the
disputed domain names to Complainant for an amount in-excess of Respondent’s
out-of-pocket costs. Therefore,
Respondent registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Campmor,
Inc. v. GearPro.com, FA 197972 (Nat. Arb.
Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and
offered to sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”); see also Little Six,
Inc. v. Domain For
Respondent is using the <mygooglestorage.com> and <mygoogledrive.com> domain names to redirect Internet users to <mozy.com>, which offers “unlimited automatic secure storage” in competition with Complainant. This diversionary use of the disputed domain names is likely to disrupt Complainant’s business. Furthermore, it is likely to create confusion among customers searching for Complainant’s business, and may lead customers to mistakenly believe that the items advertised at the <mozy.com> website are somehow sponsored or endorsed by Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <mygooglestorage.com> and <mygoogledrive.com> domain names constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is not making any use of the <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, and <googlewebstorage.com> domain names. The Panel therefore finds that Respondent registered and is using these disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant also alleges that Respondent’s timing of its registration of the disputed domain names demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii), and the Panel agrees. Complainant submits two UDRP cases that made the same finding in similar cases. In Intel Corp. v. M Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the complainant announced its intentions to launch new products in which it would use the generic terms “solo,” “duo,” and “extreme” in connection with the complainant’s “Pentium,’ “Centrino,” and “Core Inside” marks. Three days later, the respondent registered fifty-four domain names containing the complainant’s marks, and some of these domain names included one of the associated generic terms. The panel found that the respondent’s conduct constituted opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Similarly, in Microsoft Corp. v. X-Obx Designs, D2003-0093 (WIPO Apr. 11, 2003), the panel stated that “Respondent registered the domain name at issue one day prior to the commercial release of Complainant’s product … [t]he timing of the registration alone demonstrates Respondent’s bad faith in registering the domain name at issue.” The Panel finds that, like the respondents in Intel and Microsoft, Respondent’s registration of the disputed domain names at issue a few days after Complainant’s announcement that it would be launching a new product related to web storage indicates Respondent’s opportunistic bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).
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 <googledatadrive.com>, <googlenetstorage.com>, <googlewebdrive.com>, <googlewebstorage.com>, <mygoogledrive.com>, and <mygooglestorage.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 1, 2007
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