Google Inc. v. Rafi a/k/a Mohammed
Claim Number: FA0810001230595
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwick & West LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlesurvey.com>, registered with Omnis Network, Llc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2008.
On October 27, 2008, Omnis Network, Llc confirmed by e-mail to the National Arbitration Forum that the <googlesurvey.com> domain name is registered with Omnis Network, Llc and that Respondent is the current registrant of the name. Omnis Network, Llc has verified that Respondent is bound by the Omnis Network, Llc 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 November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@googlesurvey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <googlesurvey.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlesurvey.com> domain name.
3. Respondent registered and used the <googlesurvey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., was
created in 1997 and since then has become one of the largest, most highly
recognized, and widely used Internet search services in the world. Complainant holds several trademarks
registrations for its GOOGLE mark (i.e., Reg. No. 2,806,075 issued January 20,
2004) with the United States Trademark and Patent Office (“USPTO”) in
connection with online services.
Respondent registered the <googlesurvey.com> domain name on August 10, 2007. The disputed domain name resolves to an “HTTP Error 404-File or directory not found” webpage. On February 25, 2008, Respondent offered to transfer the <googlesurvey.com> domain name to Complainant in exchange for $18,000.
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 that Complainant’s registration of its GOOGLE mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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.”). Further, registration in Respondent’s country of business is not necessary to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See 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 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 <googlesurvey.com>
domain name includes the GOOGLE mark in its entirety, adding the generic
top-level domain (gTLD) “.com” and the generic term “survey.” The gTLD is immaterial to Policy ¶ 4(a)(i) analysis. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.”).
The addition of a generic term to a famous mark is insufficient to
diminish the confusingly similar nature of the <googlesurvey.com> domain name, which uses the
Complainant’s famous GOOGLE mark in its entirety. The panel finds the disputed domain name is
confusingly similar pursuant to Policy ¶4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also Arthur Guinness Son & Co. (
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
No response has been submitted in this case. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <googlesurvey.com> domain name; however, the Panel will still examine the record in consideration of the factors listed under Policy ¶ 4(c). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <googlesurvey.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the GOOGLE mark, and the WHOIS information identifies Respondent as “Rafi a/k/a Mohammed.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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 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.”).
Respondent registered the disputed domain name over a year
ago and has not posted anything on the website that resolves from the <googlesurvey.com> domain name. The Panel finds that Respondent’s failure to
use the disputed domain name does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see
also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where the respondent has advanced no basis on
which the panel could conclude that it has a right or legitimate interest in
the domain names, and no commercial use of the domain names has been established).
Respondent’s offer to sell the <googlesurvey.com> domain name to Complaintant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent offered to sell the disputed domain name to Complainant for $18,000. The Panel finds that this offer to sell the disputed domain name to Complainant for more then the out-of-pocket costs related to the registration of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Respondent’s failure to post anything at the website that resolves from the <googlesurvey.com> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to use a domain name permits an inference of registration and use in bad faith); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to use] a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”).
There is no evidence before the Panel that Respondent
intended to ever use the disputed domain name.
However, the Panel can infer that any use of the <googlesurvey.com> domain name, which
is confusingly similar to the famous GOOGLE mark, would be an attempt to profit
from the likely confusion of Internet users.
Therefore, the Panel finds bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though the respondent has not used the domain name because “[i]t
makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <googlesurvey.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 8, 2008
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