Google Inc. v. Leadsco c/o coby elimelech
Google Inc. v. Leadsco c/o coby elimelech
Claim Number: FA0906001267428
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 <pagerankglobal.com>, registered with Misk.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2009.
On June 10, 2009, Misk.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pagerankglobal.com> domain name is registered with Misk.com, Inc. and that Respondent is the current registrant of the name. Misk.com, Inc. has verified that Respondent is bound by the Misk.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 June 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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@pagerankglobal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pagerankglobal.com> domain name is confusingly similar to Complainant’s PAGERANK mark.
2. Respondent does not have any rights or legitimate interests in the <pagerankglobal.com> domain name.
3. Respondent registered and used the <pagerankglobal.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. The technology that powers Complainant’s search engine is called “PageRank.” Complainant is the owner of the corresponding PAGERANK mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,820,024 issued March 2, 2004). PAGERANK’s patented process utilizes an algorithm to examine the search terms, and then quickly produces pages that are most pertinent to the user’s inquiry.
Respondent registered the <pagerankglobal.com> domain name on March 1, 2007. The disputed domain name currently resolves to a website displaying only the message, “Please Contact 1-888-875-4787 for details.” Complainant has presented evidence that the phone number listed is linked to an unsolicited fax and “spamming” scheme, sending out bulk advertisements and messages. Previously, Respondent’s <pagerankglobal.com> domain name resolved to a website that claimed to be an “Authorized Google Specialist,” able to guarantee “top 5 placement on Google.” The website purported to sell “placement” on Complainant’s search results.
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 registrations of the
PAGERANK mark with the USPTO confers sufficient rights in the mark upon
Complainant pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Respondent’s <pagerankglobal.com> domain name contains Complainant’s PAGERANK mark while including the generic term “global” and the generic top-level domain “.com.” The Panel finds that Complainant’s PAGERANK mark is the dominant element in the disputed domain name and that the added term “global” is not sufficient to render the disputed domain name sufficiently dissimilar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reed Elsevier Inc. v. Gupta, FA 967682 (Nat. Arb. Forum May 29, 2007) (“The addition of the word “global” does nothing to distinguish the disputed domain name from Complainant’s famous mark.”); see also Disney Enters. Inc. v. Alexander, FA 778955 (Nat. Arb. Forum Sept. 25, 2006) (finding that adding the term “global” to the complainant’s DISNEY mark does not sufficiently distinguish the respondent’s domain name). Additionally, the affixation of the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s <pagerankglobal.com> domain name is confusingly similar to Complainant’s PAGERANK mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). 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); 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 authorized to use Complainant’s PAGERANK mark, and that Respondent is not commonly known by the <pagerankglobal.com> domain name. The WHOIS information lists the registrant as “Leadsco c/o coby elimelech” and there is no evidence in the record to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <pagerankglobal.com> domain name previously resolved to Respondent’s website, purporting to sell “placements” on Complainant’s Google search results. Complainant contends that Respondent registered the disputed domain name to take unfair advantage of Complainant’s PAGERANK mark, undoubtedly for financial gain. The Panel finds that Respondent has not previously used the <pagerankglobal.com> domain name 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 (iii), respectively. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, is not bona fide use).
Complainant further contends that the website that previously resolved from the disputed domain name, which prominently displayed Complainant’s PAGERANK mark, was an attempt by Respondent to pass itself off as Complainant. The Panel presumes that Respondent was profiting from such use. Thus, the Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) through its prior use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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).”).
Currently, the disputed domain name does not resolve to an active website. The only message displayed at the website resolving from the <pagerankglobal.com> domain name is, “Please Contact 1-888-875-4787 for details.” Complainant contends that the phone number listed is linked to a spam scheme, disseminating unsolicited fax messages. The Panel finds that Respondent’s current use of the disputed domain name to send unsolicited fax messages does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See XO Commc’ns Inc. v. XO Network Operations Center Inc., FA 150786 (Nat. Arb. Forum April 28, 2003) (finding that the respondent’s use of the disputed domain name to send unsolicited spam to Internet users, “fail[s] to support a finding of rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).”); see also NetCreations, Inc. v. Martinson, FA 118398 (Nat. Arb. Forum Oct. 30, 2002) (finding that the respondent’s use of the disputed domain name in connection with spam does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).).
Complainant has satisfied Policy ¶ 4(a)(ii).
The previous use of Respondent’s <pagerankglobal.com> domain name, to divert Internet users to Respondent’s competing website, presumably disrupted Complainant’s business. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See 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); see also 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).”).
The Panel finds that Respondent also engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by intentionally creating a likelihood of confusion for commercial gain as to Complainant’s affiliation with Respondent’s confusingly similar domain name and the prior resolving website. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel also concludes that Respondent’s previous use of the disputed domain name, to pass itself off as an “Authorized Google Specialist” constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); 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.”).
Complainant contends that Respondent is currently using the disputed domain name in bad faith based on its engagement in the tarnishing practice of sending out spam fax messages. Respondent presumably engages in this conduct for financial benefit. Thus, the Panel concludes that Respondent’s use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(a)(iii). See XO Commc’ns Inc. v. XO Network Operations Center Inc., FA 150786 (Nat. Arb. Forum April 28, 2003) (finding that the respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii) “by engaging in the tarnishing activity of disseminating Internet spam.”); see also Capstone Mortgage Co. v. Shook, D2004-0395 (WIPO July 16, 2004) (finding the respondent’s promotion of its business through the use of spam as evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pagerankglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 23, 2009
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