Google Inc. v. Jinsu Kim
Claim Number: FA0801001139127
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googleadwords.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2008.
On January 21, 2008, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <googleadwords.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 January 31, 2008, a Korean Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2008 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@googleadwords.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <googleadwords.com> domain name is confusingly similar to Complainant’s GOOGLE and ADWORDS marks.
2. Respondent does not have any rights or legitimate interests in the <googleadwords.com> domain name.
3. Respondent registered and used the <googleadwords.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google, Inc., offers a internationally used Internet search service through its <google.com> domain name. In addition, Complainant offers software, hardware and specialized search engine products, as well as other Internet related services under its GOOGLE mark. Complainant registered its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) on January 20, 2004 (Reg. No. 2,806,075). Complainant also holds multiple other registrations for its GOOGLE mark with the USPTO and other governmental authorities. Additionally, Complainant registered its ADWORDS mark with the USPTO on December 16, 2003 (Reg. No. 2,794,616). Complainant also has registered its ADWORDS mark with multiple other governmental authorities. Complainant has continuously provided online advertising services through the combination of its GOOGLE and ADWORDS marks since October, 2000. Complainant’s GOOGLE ADWORDS services have been referenced in multiple news articles in the mass media dating back to at least October 13, 2003.
Respondent registered the <googleadwords.com> domain name on August 21, 2005. The disputed domain name resolves to a website featuring links to third-party websites, most of which are related to online advertising. The website resolving from the disputed domain name also contains a search engine function.
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.
The Panel finds Complainant has established rights in its GOOGLE and ADWORDS marks pursuant to Policy ¶ 4(a)(i) through its registration of the marks with the USPTO and multiple other governmental authorities. See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The Panel finds Respondent’s <googleadwords.com> domain name is confusingly similar to
Complainant’s GOOGLE and ADWORDS marks pursuant to Policy 4(a)(i) because it
merely combines two of Complainant’s marks which are frequently used in
combination with each other. Also, the
addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s marks
is considered irrelevant for the purposes of evaluating whether a domain name
is confusingly similar to Complainant’s mark.
See Nintendo of Am. Inc. v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity
where respondent combined the complainant’s POKEMON and PIKACHU marks to form
the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <googleadwords.com> domain name. Once Complainant presents a prima facie case in support of these allegations, the burden shifts to Respondent to establish it does have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant established an adequate prima facie case to support its allegations and Respondent has failed to submit a response to these proceedings. Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <googleadwords.com> domain name resolves to a website which provides search engine services and displays links to third-party websites. The search engine services resolving from the disputed domain name directly compete with Complainant’s search engine services. In addition, most of the links resolving from the disputed domain name are for third-party websites offering services which directly compete with Complainant’s online advertising services. Respondent presumably receives compensation for the search engine services and third-party website links resolving from the disputed domain name. The Panel finds Respondent’s use of the disputed domain name constitutes diversion and is not a use in connection with 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). 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).”); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
In addition, the Panel finds Respondent is not commonly
known by the <googleadwords.com>
domain name and thus does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). There is no evidence in the record indicating
Respondent is known by the <googleadwords.com>
domain name. Respondent is listed as
“Jinsu Kim” in the WHOIS record.
Additionally, the record indicates Complainant has not authorized
Respondent to use its GOOGLE or ADWORDS marks in any manner. See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee 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 Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003)
(“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the confusingly similar <googleadwords.com> domain name to operate search engine services and offer links to third-party websites, some of which offer online advertising services. Both of these uses directly compete with Complainant’s business and Respondent presumably receives compensation for these uses. The Panel finds this is an attempt by Respondent to profit from the consumer confidence associated with Complainant’s GOOGLE and ADWORDS marks and constitutes registration and use in bad faith pursuant 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).”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
In addition, the Panel finds Respondent’s previously
described competing uses of the disputed domain name constitutes disruption and
are evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). 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 EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); 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).
The Panel finds 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 <googleadwords.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 11, 2008
National
Arbitration Forum