Google Inc. v. Mark Meyer
Claim Number: FA0901001243729
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwich & West LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlegameroom.com>, registered with Godaddy.com, Inc.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2009.
On January 21, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googlegameroom.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January
22, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 11, 2009
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@googlegameroom.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 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <googlegameroom.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlegameroom.com> domain name.
3. Respondent registered and used the <googlegameroom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is one of the largest and widely used online search engine services on the Internet. Complainant has operated its business since 1997, and holds multiple registered trademarks for the GOOGLE mark with authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,806,075 issued January 20, 2004).
Respondent registered the <googlegameroom.com> domain name on March 24, 2006, and is using it to feature a website that provides games and videos that contain adult-oriented content.
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 asserts rights in the GOOGLE mark by virtue of its trademark registrations, as well as its longstanding use of the mark in commerce that has achieved such recognition and fame on the Internet. The Panel is indeed very familiar with Complainant’s GOOGLE mark, and finds that Complainant has established such rights in the mark pursuant to Policy ¶ 4(a)(i) in accordance with decisions decided by previous panels on this point as well. 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).
Respondent’s <googlegameroom.com>
domain name contains Complainant’s GOOGLE mark in its entirety, but adds the
term “game room” and the generic top-level domain (“gTLD”) “.com.” In the Panel’s view, because Complainant’s
GOOGLE mark is so well known, it stands out as the dominant portion of the <googlegameroom.com> domain name, and
the addition of “game room” does not eradicate the confusing similarity with
Complainant’s mark. Furthermore, it is
well established that the addition of a gTLD such as “.com” is without
relevance to this analysis because a top-level domain is required of all domain
names. Therefore, the Panel concludes that
Respondent’s <googlegameroom.com>
domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to
Policy ¶ 4(a)(i).
See State Farm Mut. Auto. Ins. Co. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent possesses neither rights nor legitimate interests in the <googlegameroom.com> domain name. Based upon the allegations in the Complaint, the Panel finds that Complainant has established a prima facie case on this point, thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint in accordance with the rules provided under the UDRP, the Panel presumes that Respondent lacks rights and legitimate interests in the <googlegameroom.com> domain name. Nevertheless, for the purposes of providing a complete analysis, the Panel in its discretion chooses to consider the evidence in the record pursuant to the factors outlined in Policy ¶ 4(c). Because the information in the record was solely provided by Complainant and not responded to or contradicted by Respondent, the Panel presumes that all information provided by Complainant is true unless it is clearly contradicted by other evidence in the record. See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known by the <googlegameroom.com> domain name. To further its point, Complainant asserts that it has neither authorized nor licensed Respondent to use its GOOGLE mark in any way. The WHOIS domain name registration information identifies Respondent as “Mark Meyer,” which further supports Complainant’s contention. Therefore, the evidence in the record indicates that Respondent is not commonly known by the <googlegameroom.com> domain name, so the Panel concludes that Respondent’s lacks rights and legitimate interests in the <googlegameroom.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <googlegameroom.com> domain name resolves to a website that provides games and videos containing adult-oriented content. The Panel presumes that Respondent commercially benefits from this use by collecting registration, user, affiliate, and/or referral fees of some kind. In any regard, the Panel finds that Respondent’s unauthorized use of Complainant’s GOOGLE mark in a domain name to provide adult-oriented games and videos fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore concludes that Respondent lacks rights and legitimate interests in the <googlegameroom.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult-oriented websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also 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).”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel notes that Complainant offers a wide range of services under its GOOGLE mark, and has developed quite a few affiliations with other companies. Therefore, it is conceivable, and likely, to believe that Internet users may be confused as to the source or affiliation of Respondent’s <googlegameroom.com> domain name and the resolving website. The Panel presumes that Respondent is commercially benefiting from this venture, thereby attempting to profit off of the goodwill associated with Complainant’s well-known GOOGLE mark. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel also believes that Respondent’s use of the <googlegameroom.com> domain name to provide adult-oriented games and videos may tarnish Complainant’s GOOGLE mark. The Panel concludes that this alone is evidence of bad faith registration and use in this case pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
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 <googlegameroom.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: March 3, 2009
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