national arbitration forum

 

DECISION

 

Google, Inc. v. Star Co. Ltd.

Claim Number: FA0901001245134

 

PARTIES

Complainant is Google, Inc. (“Complainant”), represented by Meredith M. Pavia, of Fenwick & West LLP, California, USA.  Respondent is Star Co. Ltd. (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googlewows.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2009.

 

On February 10, 2009, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <googlewows.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a Dns has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns 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 February 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@googlewows.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <googlewows.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <googlewows.com> domain name.

 

3.      Respondent registered and used the <googlewows.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google, Inc., has made extensive, international use of its GOOGLE mark since its founding in 1997.  It has registered its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,806,075 issued January 20, 2004) in connection with its online services.  Complainant has also registered the YOUTUBE mark (Reg. No. 3,525,802 issued Oct. 28, 2008) with the USPTO in connection with its online video site.  Complainant sent Respondent a cease and desist letter asking for immediate transfer of the <googlewows.com> domain name.

 

Respondent, Star Co. Ltd., registered the <googlewows.com> domain name on October 6, 2008.  As of December 2008, the disputed domain name resolved to a website featuring adult-oriented videos, displaying Complainant’s YOUTUBE mark and mimicking the style of the website resolving from Complainant’s <youtube.com> domain name.  After Complainant sent Respondent a cease-and-desist letter, and as of January 2009, the disputed domain name resolved to a website displaying two data entry fields and written entirely in an Asian character language.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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.”).

 

The <googlewows.com> domain name includes the GOOGLE mark in its entirety, adding the generic top-level domain (gTLD) “.com” and the generic terms “wows.”  The gTLD is immaterial to a 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).  The addition of a generic term to a mark is insufficient to diminish the confusingly similar nature of the <googlewows.com> domain name, which uses Complainant’s famous GOOGLE mark in its entirety.  The Panel finds the disputed domain name is confusingly similar to Complainant’s GOOGLE mark 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. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <googlewows.com> domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <googlewows.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 “Star Co. Ltd.”  Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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); 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.”).

 

Respondent, until receipt of Complainant’s cease-and-desist letter, used the <googlewows.com> domain name to resolve to an adult-oriented website.  The Panel finds this is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <googlewows.com> domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to an adult-oriented site is not a legitimate or fair use).

 

Further, the Panel finds that Respondent was attempting to pass itself off as Complainant online by previously using Complainant’s stylized YOUTUBE mark and imitating the style of the website resolving from Complainant’s <youtube.com> domain name.  Presumably Respondent is attempting to profit by passing itself off as Complainant.  The Panel finds that this was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

Respondent changed the website resolving from the <googlewows.com> domain name after receiving a cease-and-desist letter from Complainant to a website displaying two data entry fields and written entirely in an Asian character language.  Complainant asserts that this new website is a password entry space.  Due to the timing of the change, the Panel infers that Respondent changed the resolving website in an attempt to evade the current UDRP proceedings.  The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding the respondent must demonstrate a legitimate use that existed "before any notice to [Respondent] of the dispute").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent was using the <googlewows.com> domain name to resolve to an adult-oriented website that displayed Complainant’s YOUTUBE mark and mimicked the website resolving from Complainant’s <youtube.com> domain name.  The Panel infers that Respondent was attempting to profit from this use.  Because the disputed domain name is confusingly similar to Complainant’s GOOGLE mark, Internet users are likely to be misled or confused as to Complainant’s association with the resolving website.  The Panel finds that Respondent was profiting from this confusion and therefore finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Furthermore, the Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Respondent previously mimicked the website resolving from Complainant’s <youtube.com> domain name in order to confuse Internet users as to the sponsorship of the resolving website.  Respondent’s act of passing itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

The Panel finds that by previously posting an adult-oriented website at the disputed domain name, Respondent was tarnishing Complainant’s marks and these actions amount to bad faith registration and use under 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 Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to adult-oriented websites).

 

Respondent changed its use of the website after receiving a cease-and-desist letter from Complainant.  Respondent did not respond to Complainant’s cease-and-desist letter and submitted no response in this proceeding.  The Panel finds that, in the absence of a Response, it is difficult, if not impossible, to infer a good faith reason for the registration and use of a domain name wholly incorporating another’s mark.  Additionally, the Panel finds that Respondent’s change in its use when the UDRP proceeding was imminent is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See RRI Fin., Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (holding the respondent acted in bad faith when it did not respond to the complainant’s letters requesting transfer or the complaint and the disputed domain name used the complainant’s entire mark, making a “good faith” registration or use implausible); see also Baylor Univ. v. Virtual Oil, LLC, FA 1240570 (Nat. Arb. Forum Feb. 12, 2009) (holding the respondent acted in bad faith when it contended it intended a good faith use only after the dispute arose).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googlewows.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 25, 2009

 

 

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