Google Inc. v. ramon ortiz
Claim Number: FA1101001370018
Complainant is Google Inc. (“Complainant”), represented by Meredith M. Pavia, California, USA. Respondent is ramon ortiz (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlemapsnewyork.com>, registered with Melbourne IT Ltd. d/b/a Internet Names Worldwide.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2011; the National Arbitration Forum received payment on January 28, 2011.
On January 31, 2011, Melbourne IT Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <googlemapsnewyork.com> domain name is registered with Melbourne IT Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2011 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@googlemapsnewyork.com. Also on February 3, 2011, 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 March 3, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <googlemapsnewyork.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlemapsnewyork.com> domain name.
3. Respondent registered and used the <googlemapsnewyork.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., created in 1997, operates as one of the largest search engines in the world. Complainant owns the GOOGLE mark and uses its mark in connection with it search engine and other services, including Google Maps. Complainant holds numerous trademark registrations for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,954,071 issued on May 24, 2005).
Respondent, ramon ortiz, registered the <googlemapsnewyork.com> domain name on March 23, 2010. The disputed domain name resolves to a website which offers features similar to those offered by Complainant, purportedly helping businesses get listed in search engine 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.
Complainant asserts its rights in the GOOGLE mark. Previous panels have found that a complainant may establish rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Here, Complainant holds numerous trademark registrations for its GOOGLE mark with the USPTO (e.g., Reg. No. 2,954,071 issued on May 24, 2005). Therefore, the Panel finds that Complainant has demonstrated rights in its GOOGLE mark through trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant maintains that Respondent’s <googlemapsnewyork.com> is confusingly similar to Complainant’s GOOGLE mark. The disputed domain name uses Complainant’s mark in its entirety and merely adds the descriptive word “maps,” which relates to Complainant’s Google Maps feature, the geographic term “new york,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive word, which alludes to Complainant’s business, or in this case, a feature of Complainant’s search engine services, does not properly distinguish the disputed name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel finds that the addition of a geographic term also does not properly distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Finally, the Panel finds that the affixation of a gTLD is not enough to avoid a finding of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that Respondent’s <googlemapsnewyork.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <googlemapsnewyork.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that a “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.” Here, Complainant has made a prima facie showing in support of its claims against Respondent. Respondent did not submit a Response to the Complaint, therefore, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel chooses to look to the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before proceeding.
Complainant alleges that Respondent is not commonly known by the <googlemapsnewyork.com> domain name. The WHOIS information provided identifies Respondent as “ramon ortiz,” which is not similar to the disputed domain name. Complainant argues that it has not authorized or licensed Respondent to use its GOOGLE mark in any way, including within the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name as no information in the record indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 <googlemapsnewyork.com> domain name resolves to a website which offers services that compete with Complainant’s business by helping Internet users get their names in Complainant’s “Local Business Results Map.” The Panel finds that Respondent’s use of the disputed domain name to operate a competing website is not 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). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent includes a disclaimer on the resolving website which states that the website, pictures, and logos used are not affiliated with Complainant in any way. However, the Panel finds that such placement of a disclaimer does not mitigate any confusion of Internet users as to Complainant’s sponsorship of, or association with, the disputed domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) ( “Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant maintains that Respondent’s use of the dispute domain name disrupts its business. Respondent uses the disputed domain name to redirect Internet users to a website offering services in competition with Complainant. The resolving website purportedly helps Internet users get their businesses listed in Complainant’s “Local Business Results Map.” Internet users searching for Complainant’s services may find Respondent’s website due to the confusingly similar disputed domain name. Internet users may then use the services of a competitor as a result. The Panel finds that Respondent’s offering of such competitive services does disrupt Complainant’s business which constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel infers that Respondent presumably profits from the use of the disputed domain name. Internet users looking for Complainant’s website might find Respondent’s website which incorporates Complainant’s GOOGLE mark and image. Users might become confused as to Complainant’s sponsorship of, or affiliation with, the resolving site and services offered. Respondent uses this confusion to solicit business for its competing services and for its own profit. The Panel finds that such use of the <googlemapsnewyork.com> domain name is further evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See 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); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant points out that Respondent includes a disclaimer on the resolving website which states that the site, pictures, and logos used are not affiliated with Complainant. The Panel finds that such inclusion of a disclaimer does not negate a finding of bad faith use and registration under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlemapsnewyork.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 15, 2011
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