Google Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1210001468207
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googld.com>, registered with INTERNET.BS CORP.
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 October 19, 2012; the National Arbitration Forum received payment on October 22, 2012.
On October 24, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <googld.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 October 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2012 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@googld.com. Also on October 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 28, 2012, 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
Complainant’s Contentions
a) Complainant is the owner of the GOOGLE mark, and created the GOOGLE name in 1997. Complainant uses the GOOGLE mark in connection with web search services, search engine technology, and associated products and services.
a. Respondent registered the <googld.com> domain name on October 10, 2002. The disputed domain name resolves to a website that features links to other websites, a crude search engine service, and click-through advertisements.
b) Policy ¶ 4(a)(i): Complainant’s rights and the confusingly similar nature of the <googld.com> domain name.
a. Complainant is the owner of various registrations for the GOOGLE mark around the world. These registrations predate the registration date of the domain name. See Chinese State Administration for Industry and Commerce (“SAIC”) Reg. No. 1,451,705 registered Sept. 28, 2000; Complainant’s Exhibits 8A–8B.
b. The <googld.com> domain name is nearly identical or confusingly similar to the GOOGLE mark. The only change made to Complainant’s mark in the disputed domain name is the replacement of the “e” at the end of the GOOGLE mark with the letter “d.” Respondent’s editing of the “e” to “d” is an attempt to capitalize on frequent user misspelling or typographical errors of the GOOGLE mark.
c) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <googld.com> domain name.
a. The GOOGLE mark is so well known throughout the world that it is difficult to conceive of any purported rights of legitimate interests Respondent may claim in the domain name.
b. There is no evidence in the WHOIS record that Respondent has ever been commonly known by the <googld.com> domain name. Respondent is not licensed or otherwise authorized to use the GOOGLE mark.
c. Respondent has neither rights nor legitimate interests when the <googld.com> domain name resolves to a webpage that is monetized with click-through advertisements for Google products and services.
d. Respondent is typosquatting in order to take advantage of common spelling errors in the GOOGLE mark to direct Internet users to the <googld.com> domain name.
d) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <googld.com> domain name.
a. Respondent is operating a search engine service on the <googld.com> domain name’s resolving webpage as an attempt to disrupt Complainant’s own search engine business in bad faith.
b. Respondent is attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the GOOGLE mark. Respondent is generating click-through revenues through advertisements on the <googld.com> domain name’s resolving website.
c. Respondent is engaging in opportunistic bad faith because the disputed domain name is obviously connected with the well-known GOOGLE mark. Respondent could not have chosen the disputed domain name for any reason other than to trade on that name and to confuse Internet users.
d. Respondent registered the <googld.com> domain name with actual knowledge of the GOOGLE mark and its associated products. The GOOGLE mark is famous and was registered by Complainant years prior to Respondent’s registration of the <googld.com> domain name.
i. Moreover, even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith.
e. Because Respondent’s disputed domain name only differs from the GOOGLE mark by a single letter, it is an example of typosquatting. Respondent merely deleted the “e”, replacing it with the letter “d” (which is in close and typographical proximity to the “e” on a traditional QWERTY keyboard) in Complainant’s famous GOOGLE mark, thereby capitalizing on consumer confusion and constituting bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its GOOGLE mark.
2. Respondent’s <googld.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.
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.”).
Complainant contends that it is the owner of the GOOGLE mark, and created the GOOGLE name in 1997. Complainant claims to use the GOOGLE mark in connection with web search services, search engine technology, and associated products and services. Complainant argues that it is the owner of various registrations for the GOOGLE mark around the world, and that these registrations predate the registration date of the domain name. The Panel notes that while Complainant has not provided actual certificates of registration, Complainant has submitted evidence to show that it owns numerous worldwide trademark registrations, including those with the SAIC for the GOOGLE mark (Reg. No. 1,451,705 registered Sept. 28, 2000). The Panel notes that Complainant’s registration of its GOOGLE mark around the world has been held to be sufficient to establish rights in the mark by prior UDRP panels as well. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Therefore, the Panel finds that Complainant has established its rights in the GOOGLE mark under Policy ¶ 4(a)(i).
Complainant argues that the <googld.com> domain name is nearly identical or confusingly similar to the GOOGLE mark. Complainant alleges that the only change made to Complainant’s mark in the disputed domain name is the replacement of the letter “e” at the end of the GOOGLE mark with the letter “d.” The Panel notes that in addition to the replaced letter, Respondent added the generic top-level domain (“gTLD”) “.com” to the disputed domain name, but the Pane finds that this addition is irrelevant to the Policy ¶ 4(a)(i) analysis. 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). Previous panels have found that minor alterations to the spelling of a distinctive mark create a tendency for the disputed domain name to be confusing similar to the 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.”). The Panel agrees and finds that in this case, Respondent’s <googld.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant next argues that Respondent does not have any rights of legitimate interests in the disputed domain name. Complainant points to the fact that there is no evidence in the WHOIS record indicating that Respondent has ever been commonly known by the <googld.com> domain name. Complainant states that Respondent is not licensed or otherwise authorized to use the GOOGLE mark. The Panel notes that the WHOIS information lists the registrant as “PPA Media Services / Ryan G Foo.” The Panel finds that based upon the available evidence, Respondent is not commonly known by the <googld.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant next alleges that Respondent has neither rights nor legitimate interests when the <googld.com> domain name resolves to a webpage that is monetized with click-through advertisements for Google products and services. The Panel notes that the disputed domain name resolves to a website located at <gogeles.com>, which features links to the websites of Complainant’s and third-party sites, a list search results related to areas in which Complainant does business, and a search bar. Although Complainant does not argue it explicitly, previous panels have held that the use of a confusingly similar disputed domain name to operate a website that generates click-through and other advertisement revenues is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). The Panel agrees that Respondent is attempting to do the same, and determines that Respondent is not making 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).
Complainant argues that Respondent is typosquatting in order to take advantage of common spelling errors in the GOOGLE mark to direct Internet users to the <googld.com> domain name. Previous panels have found that a respondent’s act of typosquatting does not create rights or legitimate interests in a disputed domain name when the domain name is an intentional misspelling of a mark which complainant has rights in. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The Panel agrees and finds that the <googld.com> domain name is an example of typosquatting, and that therefore Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant finally argues that Respondent registered and is using the <googld.com> domain name in bad faith. Complainant alleges that Respondent is operating a search engine service on the <googld.com> domain name’s resolving webpage as an attempt to disrupt Complainant’s own search engine business in bad faith. The Panel notes that the disputed domain name offers links to products offered by Complainant as well as products and services offered by third-parties. The Panel finds that Respondent’s use of the disputed domain to divert Internet users to Respondent’s own search engine and website advertisements weighs towards finding that Respondent intends to disrupt Complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). The Panel agrees, and finds that the <googld.com> domain name is being used by Respondent to disrupt Complainant’s business under the GOOGLE mark, and that such disruption is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the GOOGLE mark. Complainant believes that Respondent is generating click-through revenues through advertisements on the <googld.com> domain name’s resolving website. Previous panels have held that capitalizing on mistaken and confused Internet users is evidence of a bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel agrees, and concludes that Respondent intended to confuse Internet users in order to attract such users to the resolving website for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered the <googld.com> domain name with actual knowledge of the GOOGLE mark and its associated products. Complainant believes this is true because the GOOGLE mark is famous and was registered by Complainant years prior to Respondent’s registration of the <googld.com> domain name. Complainant further argues that constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant argues that because Respondent’s disputed domain name only differs from the GOOGLE mark by a single letter, it is an example of typosquatting. Complainant argues that Respondent merely deleted the first “G” in Complainant’s famous GOOGLE mark, thereby capitalizing on consumer confusion and constituting bad faith registration and use. The Panel notes that this is incorrect, as the <googld.com> domain name includes both instances of the letter “g,” but features the replacement of the letter “e” with the letter “d.” The Panel nonetheless agrees with Complainant’s contention that because Respondent seeks to capitalize on typographical errors of Internet users, such as those that could likely result in misspelling the GOOGLE mark as “googld,” Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to 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 <googld.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 12, 2012
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