Google Inc. v. AdSense Wala
Claim Number: FA1306001506186
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is AdSense Wala (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adsensewala.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <adsensewala.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2013 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@adsensewala.com. Also on June 27, 2013, 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 July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
i. There is no evidence showing that Respondent was commonly known by the domain name, despite Respondent’s use of “AdSense Wala” in its domain name registration information.
ii. The domain name resolves to a website that purports to offer ADSENSE training courses for 3000 rupees, along with a “FREE Verified Google AdSense Account.”
iii. At least one reviewer has claimed that such services are a “fraud” and that the reviewer was refused the return of his/her payment, despite being promised a money-back guarantee.
i. Respondent’s registration and use of the ADSENSE mark as part of the domain name to attract Internet users to Respondent’s website, where it advertises a training course in techniques to use Complainant’s ADSENSE service, along with a “FREE Verified Google AdSense Account” services that compete with the services provided by Complainant constitutes bad faith registration and use.
ii. Respondent diverts consumers seeking Complainant’s website to Respondent’s website for Respondent’s own commercial gain.
iii. Respondent is using the domain name to capitalize on unsuspecting Internet users who are deceived into believing that Respondent is offering legitimate services to increase ADSENSE revenue and are defrauded in the amount of their payment for Respondent’s purported services.
iv. The fame and unique qualities of the ADSENSE mark, which were adopted and registered by Complainant years prior to the registration of the domain name, make it extremely unlikely that the domain name was created independently.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 formally launched its ADSENSE ad placement service in June 2003. Complainant argues that it is the owner of a trademark registration with the IPO-Pakistan for the ADSENSE mark (Reg. No. 211115, registered June 30, 2005). The Panel notes that Complainant also registered its ADSENSE mark in various countries throughout the world. Id. The Panel finds that because Respondent appears to reside in Pakistan, Complainant’s registration of the ADSENSE mark with the IPO-Pakistan, and various other trademark agencies, sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). 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).
Complainant contends that Respondent’s <adsensewala.com> domain name is confusingly similar to Complainant’s ADSENSE mark as Respondent has merely added the term “wala,” which is a non-distinctive term, and the gTLD “.com.” Complainant claims that the term “wala” is a common term in the Urdu language, and in the manner used here, “wala” means “of” or “pertaining to,”” and conversationally, could refer to one “who sells.” The Panel holds that Respondent’s addition of a seemingly generic term such as “wala” to Complainant’s mark in this domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See 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). The Panel also finds that Respondent’s addition of a gTLD to its domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel concludes that Respondent’s <adsensewala.com> domain name is confusingly similar to Complainant’s ADSENSE mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that there is no evidence showing that Respondent was commonly known by the domain name. Complainant contends that it has not authorized Respondent to register or use the domain name. Complainant also asserts that Respondent is not affiliated with, associated with or otherwise endorsed by Complainant. Complainant contends that although Respondent’s WHOIS record lists its name as “AdSense Wala,” and the resolving website advertises for a business named “AdSensewala,” Respondent clearly chose that name to trade off the goodwill and game of Complainant’s ADSENSE mark. Therefore, the Panel holds that although Respondent appears to be commonly known by the <adsensewala.com> domain name at first glance of the WHOIS, Respondent is in fact not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on other evidence in the record. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges that the domain name resolves to a website that purports to offer ADSENSE training courses for 3000 rupees, along with a “FREE Verified Google AdSense Account.” Complainant claims that Respondent is using the <adsensewala.com> domain name for profit to divert Internet users to its own website, which competes directly with Complainant’s business. Prior panels have determined that a respondent’s use of a domain name to divert Internet users to its own websites for the respondent’s own commercial gain is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Thus, the Panel holds that Respondent’s competing use of the <adsensewala.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that at least one reviewer of Respondent’s website has claimed that Respondent’s services are a “fraud” and that the reviewer was refused the return of his or her payment, despite being promised a money-back guarantee. The Panel notes that Respondent’s <adsensewala.com> domain name resolves to a website that contains an “Order Form” for “AdSense Training & Earning Course Order Form,” where Internet users can enter their personal information and pay for Respondent’s “services.” The Panel also notes that one customer apparently used Respondent’s services and the result was twofold: the customer received a CD that was filled with viruses from Respondent, and the useful files within the CD were cracked or free software programs; upon use of the software, the customer was permanent banned from Complainant’s ADSENSE program. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel found that “Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Accordingly, the Panel finds that Respondent’s use of the <adsensewala.com> domain name to phish for personal and financial information is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Respondent’s decision to use the domain name in an attempt to sell copies of software that contain malicious software is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
Complainant has proven this element.
Complainant contends that Respondent’s registration and use of the domain name was for purposes of attracting Internet users to Respondent’s website, where it advertises a training course in techniques to use Complainant’s ADSENSE service, along with a “FREE Verified Google AdSense Account” services that compete with the services provided by Complainant constitutes bad faith registration and use. Prior panels have found that a respondent’s use of a domain name to provide a service that competes with complainant’s services evidences bad faith use and registration of the domain name. 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).”). Consequently, the Panel holds that Respondent’s competing use of the <adsensewala.com> domain name evidences that Respondent has registered and is using the domain name in a bad faith scheme to disrupt Complainant’s business under Policy ¶ 4(b)(iii).
Complainant claims that Respondent diverts consumers seeking Complainant’s website to Respondent’s website for Respondent’s own commercial gain. Complainant alleges that Respondent’s domain name links to a website that offers ADSENSE training courses for 3000 rupees, along with a “FREE Verified Google AdSense Account.” The Panel finds that Respondent’s use of the <adsensewala.com> domain name diverts Internet users away from Complainant’s website to Respondent’s website and the Panel determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant asserts that Respondent is using the domain name to capitalize on unsuspecting Internet users who are deceived into believing that Respondent is offering legitimate services to increase ADSENSE revenue and are defrauded in the amount of their payment for Respondent’s purported services. Complainant contends that Respondent’s <adsensewala.com> domain name links to a website that offers ADSENSE training courses for 3000 rupees, along with a “FREE Verified Google AdSense Account.” In Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006), the panel found 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. Therefore, the Panel finds that Respondent’s attempt to phish for personal and financial information from Internet users demonstrates bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant alleges that the fame and unique qualities of the ADSENSE mark, which were adopted and registered by Complainant years prior to the registration of the domain name, make it extremely unlikely that the domain name was created independently proving Respondent had actual knowledge of Complainant’s ADSENSE mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <adsensewala.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 26, 2013
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