Google
Inc. v.
Claim Number: FA1006001330290
Complainant is Google
Inc. (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <googledoc.com>, registered with Register.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2010.
On June 17, 2010, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googledoc.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@googledoc.com. Also on June 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <googledoc.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googledoc.com> domain name.
3. Respondent registered and used the <googledoc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., operates an Internet search engine and has an official website resolving from the <google.com> domain name. In addition to Internet search services, Complainant provides a wide range of other products and services including GOOGLE DOCS, a service for creating and sharing documents, presentations, and spreadsheets online. Complainant holds multiple trademark registrations for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”):
GOOGLE 2,806,075 January 20, 2004
GOOGLE 2,884,502 September 14, 2004
GOOGLE 2,954,071 May 24, 2005
GOOGLE 3,140,793 September 12, 2006
GOOGLE 3,570,103 February 3, 2009
Respondent, Ravi Mani, registered the disputed domain name on May 31, 2004. The disputed domain name resolves to a parked website displaying links to third-party websites unrelated to Complainant.
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 its GOOGLE mark based on its
holding of multiple trademarks with the USPTO.
The Panel finds that Complainant’s registrations of its GOOGLE mark with
the USPTO is sufficient evidence of Complainant’s rights in its GOOGLE mark for
the purposes of 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
Complainant argues that Respondent’s <googledoc.com>
domain name is confusingly similar
to Complainant’s GOOGLE mark.
Respondent’s disputed domain name incorporates the entirety of
Complainant’s mark and merely adds the descriptive term “doc” (an abbreviation
of the word “document”) which is clearly related to products and services
offered by Complainant under the mark. The Panel finds that the addition of a descriptive term creates
confusing similarity between a domain name and a mark, especially where, as
here, the term has an obvious relationship to Complainant’s business. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding
that by adding the term “security” to the complainant’s VANCE mark, which
described the complainant’s business, the respondent “very significantly
increased” the likelihood of confusion with the complainant’s mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7,
2004) (finding the respondent’s <amextravel.com> domain name confusingly
similar to Complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)). Respondent’s disputed domain name also
appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD
is irrelevant for the purposes of Policy ¶ 4(a)(i)
analysis as a TLD is a required element of every domain name. See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see
also 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). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <googledoc.com>
domain name is confusingly similar
to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the <googledoc.com> domain name.
Policy ¶ 4(a)(ii) requires that Complainant
first establish a prima facie case in
support of its contentions before the burden shifts to Respondent to prove that
it does have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA
873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once
a prima facie case has been
established by the complainant, the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)); see also Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the
“complainant must first make a prima facie case that [the] respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have
rights or legitimate interests.”). The Panel finds that the arguments contained
in Complainant’s Complaint sufficiently establish a prima facie case. The Panel
also finds that based on Respondent’s failure to respond to these proceedings
it can infer that Respondent lacks rights and legitimate interests in the
disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). Although the Panel presumes Respondent lacks
rights and legitimate interests in the disputed domain name, the Panel will
examine the record in light of the factors outlined in Policy ¶ 4(c) to make a
full determination.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Ravi Mani.” Complainant further asserts that it has not authorized or licensed Respondent to use its mark in any way. There is no other evidence in the record that would indicate anything to the contrary. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 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).
Complainant asserts that Respondent’s use of the disputed domain name to resolve to a parked website that does not display any active content but merely click-through ads to businesses unrelated to Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent is not using the disputed domain name in connection with 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a parked website displaying click-through links to websites unrelated to Complainant. Complainant alleges, and the Panel agrees, that Respondent is commercially gaining from the fees generated by the displayed click-through links. Therefore, the Panel finds that Respondent has intentionally attempted to attract Internet users for its own commercial gain through its registration and use of the confusingly similar domain name. The Panel finds that this is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that 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 <googledoc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 21, 2010
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