Google Inc. v. FORTIS INFOTECH / ASIF
Claim Number: FA1210001469446
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is FORTIS INFOTECH / ASIF (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlesurveyjobs.com>, registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 31, 2012.
On October 31, 2012, CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <googlesurveyjobs.com> domain name is registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM 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 November 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@googlesurveyjobs.com. Also on November 1, 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 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <googlesurveyjobs.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlesurveyjobs.com> domain name.
3. Respondent registered and used the <googlesurveyjobs.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant GOOGLE was created in 1997 and remains one of the largest, most recognized search engine services in the world. Complainant owns numerous registrations for its GOOGLE mark with the United States Patent and Trademark Offices (“USPTO”), including:
(Reg. No. 2,884,502 registered Sept. 14, 2004)
(Reg. No. 2,806,075 registered Jan. 20, 2004)
(Reg. No. 2,954,071 registered May 24, 2005)
(Reg. No. 3,570,103 registered Feb. 3, 2009)
(Reg. No. 4,123,471 registered April 10, 2012)
(Reg. No. 4,120,012 registered April 3, 2012)
Complainant also owns registrations for its GOOGLE mark with numerous foreign countries, a few of which include:
Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA539,576 registered Jan. 12, 2001)
China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,556,520 registered Dec. 7, 2009)
France’s National Institute of Industrial Property (“NIIP”) (Reg. No. 63,469,539 registered Dec. 14, 2006)
India’s Controller-General of Patents, Designs and Trademarks (“CGPDT”) (Reg. No. 1,351,909 registered April 20, 2005)
Japan Patent Office (“JPO”) (Reg. No. 4,478,963 registered June 1, 2001)
Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 622,721 registered Jan 17, 2000)
Spanish Patent and Trademark Office (“SOPM”) (Reg. No. 881,006 registered Jan. 12, 2000)
United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,410,931 registered Jan 12, 2006)
Respondent registered the <googlesurveyjobs.com> domain name on July 23, 2012, and uses it to engage in a phishing scam by collecting registration fees and personal information from Internet users diverted to Respondent’s website.
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.”).
The Panel finds that Complainant has established rights in its GOOGLE mark through evidence of its trademark registrations around the world, including registrations with the USPTO and CGPTDT. Previous panels have likewise found that evidence of numerous registrations of a mark with several trademark authorities around the world is sufficient to establish rights in a mark. 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).
Respondent’s <googlesurveyjobs.com> domain name is confusingly similar to Complainant’s GOOGLE mark, as it merely adds the non-distinctive terms “survey” and “jobs” to Complainant’s mark, and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that adding non-distinctive terms as well as a gTLD onto a registered mark is not enough to distinguish the disputed domain name from a complainant’s registered mark. 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.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Thus, the Panel finds that Respondent’s <googlesurveyjobs.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known by the <googlesurveyjobs.com> domain name or any name containing Complainant’s GOOGLE mark. The WHOIS information associated with the <googlesurveyjobs.com> domain name lists “FORTIS INFOTECH” as registrant, which is not similar to the disputed domain name. Previous panels have routinely found that when the WHOIS information lists a registrant that has no connection to Respondent or the disputed domain name and Complainant has not authorized Respondent to use the disputed domain name, Respondent is not commonly known by the disputed domain name. 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); 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). Thus, the Panel finds that Respondent is not commonly known by the <googlesurveyjobs.com> domain name according to Policy ¶ 4(c)(ii).
Complainant maintains that Respondent has no rights or legitimate interest in the <googlesurveyjobs.com> domain name, as it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant claims that Respondent’s domain name resolves to a website allegedly offering employment opportunities and providing a registration form. Respondent’s resolving website contains links such as, “EASY ONLINE JOBS” and “REGISTER NOW” and requests information such as “Full Name,” “Full Postal Address,” “Cty,” “Pincode,” “Mobile,” “Alternet Number,” and “Email.” Complainant argues that this is part of a phishing scheme, used to collect personal information from unsuspecting Internet users seeking Complainant’s services. Previous panels have found that evidence of fraudulently acquiring personal information of Internet users is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)). The Panel finds that Respondent is involved in a phishing scheme, and therefore is not making a bona fide offering of goods or services under policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under ¶ 4(c)(iii), and thus has no rights or legitimate interest in the <googlesurveyjobs.com> domain name
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a confusingly similar <googlesurveyjobs.com> domain name to confuse Internet users and attract them to Respondent’s resolving website featuring Complainant’s GOOGLE, where it engages in fraudulent phishing for personal information. Previous panels have found bad faith when a respondent has registered a confusingly similar domain name to intentionally attempt to attract Internet users to its fraudulent website by using a complainant’s famous mark. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
The Panel therefore finds that Respondent registered and is using the <googlesurveyjobs.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE mark, it is inconceivable that Respondent could have registered the <googlesurveyjobs.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and find 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).
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 <googlesurveyjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 12, 2012
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