Google, Inc. v. Whois Privacy LLC
Claim Number: FA0908001278684
Complainant is Google, Inc. (“Complainant”), represented by Meredith
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googlel.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 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@googlel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <googlel.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlel.com> domain name.
3. Respondent registered and used the <googlel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., provides and maintains a search
engine as well as offers e-mail and web hosting services. Complainant has operated under the GOOGLE
mark since 1997. Complainant holds
multiple trademarks with the United States Patent and Trademark Office
(“USPTO”) (i.e., Reg. No. 2,954,071 issued
Respondent registered the <googlel.com> domain name on
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 owns several trademark registrations with the
USPTO for the GOOGLE mark (i.e. Reg. No. 2,954,071 issued
Complainant argues that
Respondent’s <googlel.com> domain name is confusingly
similar to Complainant’s GOOGLE mark.
Responden’t disputed domain name contains Complainant’s mark in its
entirety, adds the letter “l,” and adds the generic top-level domain “.com.” The Panel finds that a disputed domain name
that contains a complainant’s mark in its entirety and adds a single letter
creates a confusing similarity between the disputed domain name and the
complainant’s mark. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive). In addition, the Panel finds that the addition of a gTLD
is irrelevant in distinguishing a disputed domain name from a registered
mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the <googlel.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has establised a prima facie case. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Complainant contends that Respondent is neither commonly known by, nor licensed to register, the <googlel.com> domain name. Respondent’s WHOIS information identifies Respondent as “Whois Privacy LLC.” The Panel finds that the WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant presents evidence that Respondent’s <googlel.com> domain name, which was registered on September 21,
2005, redirects Internet users to Respondent’s blog containing politically
charged content located at the <selwynduke.com> domain name. Even though the disputed domain name is
arguably being used for free speech, the Panel finds that irrelevant where
Respondent’s disputed domain name infringes on Complainant’s registered
mark. See E. & J. Gallo
Winery v. Hanna Law Firm, D2000-0615 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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
Complainant offers evidence that Respondent’s <googlel.com> domain name redirects Internet users to the
<selwynduke.com> domain name which resolves to a website containing
Respondent’s politically charged blog.
The Panel finds that Respondent’s use of the disputed domain name to
increase traffic to Respondent’s politically charged blog website is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA
153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of
the goodwill surrounding Complainant’s mark to further its own political
agenda, Respondent registered the disputed domain names in bad faith.”); see also Journal Gazette Co. v.
Domain For Sale Inc., FA 122202 (Nat. Arb. Forum
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 <googlel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 23, 2009
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