Google Inc. v. Yang Chen / Yang Chen
Claim Number: FA1108001403007
Complainant is Google Inc. (“Complainant”), represented by Kathlyn Querubin of Cooley LLP, California, USA. Respondent is Yang Chen / Yang Chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <GOOGLE-DNS.COM>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 15, 2011. The Complaint was submitted in both English and Chinese.
On August 14, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <GOOGLE-DNS.COM> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 August 18, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 7, 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@GOOGLE-DNS.COM. Also on August 18, 2011, the Chinese language 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 September 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the owner of the GOOGLE mark, which it uses in connection with the marketing of one of the world’s largest collections of searchable documents.
Complainant has registrations for the GOOGLE trademark on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,806,075, registered January 20, 2004).
Respondent registered the <GOOGLE-DNS.COM> domain name on or about June 10, 2011.
The disputed domain name resolves to an inactive website.
Respondent’s <GOOGLE-DNS.COM> domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent is not commonly known by the disputed domain name.
Complainant has not authorized Respondent to register or use the domain name.
Respondent does not have any rights to or legitimate interests in the <GOOGLE-DNS.COM> domain name.
Respondent registered and uses the <GOOGLE-DNS.COM> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond to a UDRP complaint 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the GOOGLE mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), finding that registration of a mark with a national trademark authority is sufficient to establish a complainant’s rights in that mark for purposes of the Policy.
Respondent’s <GOOGLE-DNS.COM> domain name is confusingly similar to Complainant’s mark. The domain name differs from the mark only by the addition of punctuation in the form of a hyphen and of the letters “DNS” and the generic top-level domain (“gTLD”) “.COM.” These alterations of the mark in forming the domain name fail to distinguish the disputed domain name from the mark under the standards of the Policy. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that the addition to a mark of another of hyphens in forming a domain name is irrelevant for purposes of analysis of the question of confusing similarity under the Policy).
Similarly, the addition of a generic term is insufficient to differentiate a domain name from a mark under Policy ¶ 4(a)(i). See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a 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)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to avoid confusing similarity between the mark and the domain names).
Finally, the addition of a generic top-level domain (“gTLD”) is likewise irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Respondent’s <GOOGLE-DNS.COM> domain name is confusingly similar to Complainant’s GOOGLE trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has neither rights to nor legitimate interests in the disputed <GOOGLE-DNS.COM> domain name. Once a complainant has made out a prima facie case in support of this allegation, the burden shifts to a respondent to provide evidence demonstrating the existence of such rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also 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 a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)).
Complainant has made out the requisite prima facie case in support of its claim under this head of the Policy. Because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are entitled to conclude, without more, that Respondent has no rights to or legitimate interests in the contested domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
See also 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.”).
Nonetheless, we will examine the evidence of the record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to register or use the domain name. Moreover, the WHOIS record for the disputed domain name identifies the registrant only as “Yang Chen / Yang Chen,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <GOOGLE-DNS.COM> domain name so as to have rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). On the point, see both Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007).
We also observe that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to an inactive website. A failure actively to use a contested domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Therefore, Respondent’s inactive use of the <GOOGLE-DNS.COM> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We turn, then to the question whether Respondent’s registration and use of the disputed domain name in the manner alleged in the Complaint was, and is, in bad faith. Policy ¶ 4(b) lists factors which may be considered in determining the question of bad faith. This list is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.
And see, in particular, Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.
We will therefore consider the overall circumstances presented on the record in this proceeding in examining the question of bad faith registration and use of the contested domain name.
In this regard, there is no dispute as to Complainant’s allegation that the contested <GOOGLE-DNS.COM> domain name resolves to an inactive website. The prolonged and unexplained inactivity of a domain name which is confusingly similar to the mark of another has frequently been found to be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See, for example, DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith).
The Panel therefore finds that Respondent’s registration and use of the disputed domain name was, and is, in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <GOOGLE-DNS.COM> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 22, 2011
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