Google Inc. v. SP
Claim Number: FA1106001395068
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is SP (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleloadfiles.com>, registered with UK2 Group Ltd.
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 22, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 23, 2011, UK2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <googleloadfiles.com> domain name is registered with UK2 Group Ltd. and that Respondent is the current registrant of the name. UK2 Group Ltd. has verified that Respondent is bound by the UK2 Group Ltd. 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 June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@googleloadfiles.com. Also on June 29, 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 July 25, 2011, 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" 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 <googleloadfiles.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googleloadfiles.com> domain name.
3. Respondent registered and used the <googleloadfiles.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., offers search engine services that allow Internet users to search for and find a wide variety of content in many different languages with its advanced search technology and array of search tools. Complainant markets its search engine services under the GOOGLE mark, which is has registered with many trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), the Uzbekistan State Patent Office (“USPO”), and the Hong Kong Trade Marks Registry (“HKTMR”):
USPTO
Reg. No. 2,806,075 registered January 20, 2004;
Reg. No. 2,884,502 registered September 14, 2004;
Reg. No. 2,954,071 registered May 24, 2005;
Reg. No. 3,140,793 registered September 12, 2006;
Reg. No. 3,570,103 registered February 3, 2009;
OHIM
Reg. No. 1104306 registered October 7, 2005;
Reg. No. 4316642 registered April 18, 2006;
USPO
Reg. No. MGU14019 registered September 2, 2006; and
HKTMR
Reg. No. 300540729 registered December 2, 2005.
Respondent, SP, registered the <googleloadfiles.com> domain name on May 21, 2010. The disputed domain name resolves to a web page imitating Complainant’s website, including making an unauthorized use of the GOOGLE logo, offering links for adult-oriented downloads, and providing search engine services that compete with 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 owns the GOOGLE mark, which is has registered with many trademark authorities around the world, including the USPTO, the OHIM, the USPO, and the HKTMR:
USPTO
Reg. No. 2,806,075 registered January 20, 2004;
Reg. No. 2,884,502 registered September 14, 2004;
Reg. No. 2,954,071 registered May 24, 2005;
Reg. No. 3,140,793 registered September 12, 2006;
Reg. No. 3,570,103 registered February 3, 2009;
OHIM
Reg. No. 1104306 registered October 7, 2005;
Reg. No. 4316642 registered April 18, 2006;
USPO
Reg. No. MGU14019 registered September 2, 2006; and
HKTMR
Reg. No. 300540729 registered December 2, 2005.
The Panel determines that this extensive evidence of worldwide trademark registration firmly proves Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s actual location. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <googleloadfiles.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name is simply comprised of a combination of the GOOGLE mark, the generic terms “load” and “files,” and the generic top-level domain (“gTLD”) “.com.” According to panel decisions in Napster, Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006), and Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the addition of generic words to Complainant’s mark is insignificant and does not affect confusing similarity. Such decisions support the Panel’s finding that the disputed domain name is confusingly similar to Complainant’s mark despite the generic terms. The Panel also concludes that the attached gTLD has no effect on a Policy ¶ 4(a)(i) analysis as gTLDs are required elements of domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). As a result, the Panel finds that Respondent’s <googleloadfiles.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
The Panel concludes that the elements of Policy ¶ 4(a)(i) have been met.
It is Complainant’s obligation under Policy ¶ 4(a)(ii) to present a prima facie case against Respondent before the burden of demonstrating rights and legitimate interests is shifted to Respondent. The Panel finds that Complainant has satisfied this responsibility. Respondent, however, has defaulted, failing to contest any of Complainant’s allegations. Based on the lack of contrary evidence, the Panel accepts Complainant’s statements as true and infers that Respondent does not possess rights and legitimate interests. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). The Panel, however, will still examine the evidence under Policy ¶ 4(c) to complete an independent analysis of Respondent’s rights and legitimate interests.
Complainant contends that it has not licensed or authorized Respondent to use the GOOGLE mark in any way. As the WHOIS information lists the registrant as “SP,” which has no apparent relation to the disputed domain name, Complainant alleges that Respondent is not commonly known by the <googleloadfiles.com> domain name. Based on the lack of affirmative evidence to the contrary, the Panel agrees and finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that the <googleloadfiles.com> domain name offers adult-oriented material for download through various featured links. Complainant argues that providing such material under the disputed domain name is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) according to past panel decisions. See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”); see also InnoTown AS v. Forest, D2003-0718 (WIPO Oct. 27, 2003) (because there was “no immediate or apparent connection between the name selected by the Respondent and its web site offering links to various [adult-oriented] web sites” the panel inferred that the respondent registered the domain name to “secure its residual traffic” and held that this activity was not a bona fide offering of goods or services).
Complainant alleges that Respondent’s website competes with Complainant by offering similar search engine services. The Panel finds that offering competing services under Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”).
Complainant also argues that Respondent’s resolving website imitates Complainant’s website by creating the same general look and feel, using Complainant’s GOOGLE logo, including a search box, mimicking Complainant’s standard text font and tabs, and offering similar search engine services. The Panel finds that Respondent’s efforts to pass itself off as Complainant indicate that Respondent lacks rights and legitimate interests in the <googleloadfiles.com> 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 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 . . . .”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <googleloadfiles.com> domain name to compete with Complainant and disrupt its business by offering similar search engines at a resolving website designed to mimic Complainant’s actual website. Complainant argues that this disruptive intent reveals bad faith registration and use, and the Panel agrees under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant argues that Respondent aims to create the impression that its resolving website is sponsored by Complainant by mimicking the design of Complainant’s actual website. Complainant alleges that the resolving website uses Complainant’s logo and provides a search engine and links, which create the look and feel of Complainant’s website. Complainant asserts that Respondent uses the resolving website designed in this way and Complainant’s GOOGLE mark in the <googleloadfiles.com> domain name in order to attract Internet users seeking Complainant and create confusion regarding the origin or affiliation of the resolving website. The Panel finds that Respondent presumably carries out these acts with the intention of profiting from Complainant’s goodwill, which supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also 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).
Complainant also contends that Respondent offers links to downloads of adult-oriented material at the <googleloadfiles.com> domain name. The Panel determines that offering such downloads under Complainant’s GOOGLE mark may tarnish Complainant’s reputation by associating it with potentially objectionable products or materials it does not offer or endorse. As a result, the Panel holds that Respondent’s use of the <googleloadfiles.com> domain name in connection with adult-oriented material shows bad faith registration and use according to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); 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).
The Panel finds 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 <googleloadfiles.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 27, 2011
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