Google Inc. v. asa dsye
Claim Number: FA1309001519857
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is asa dsye (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <piay-gogle.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2013; the National Arbitration Forum received payment on September 18, 2013.
On September 18, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <piay-gogle.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 September 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@piay-gogle.com. Also on September 18, 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 October 15, 2013, 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
1. Respondent’s <piay-gogle.com> domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE PLAY marks.
2. Respondent does not have any rights or legitimate interests in the <piay-gogle.com> domain name.
3. Respondent registered and uses the <piay-gogle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registrations for its well-known GOOGLE mark internationally, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,884,502 registered September 14, 2004; Reg. No. 4,123,471 registered April 10, 2012) and with the Russian Federal Service for Intellectual Property (“ROSPATENT”) (Reg. No. 320,546 registered February 7, 2007; Reg. No. 191,819 registered August 2, 2000.) Complainant has filed trademark applications for the GOOGLE PLAY mark with the USPTO on March 5, 2012 and March 7, 2012.
Respondent registered the <piay-gogle.com> domain name on May 4, 2013, and uses it to redirect Internet users seeking Complainant to an inactive 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 Respondent has rights in its GOOGLE mark through its registrations with the USPTO and the Russian Federation under Policy ¶ 4(a)(i).
Previous panels have found that evidence of a registration for a given mark with a federal authority is sufficient to establish rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <piay-gogle.com> domain name deletes an “o” in Complainant’s famous GOOGLE mark and adds the term “play” misspelled as “piay,” the generic top-level domain “.com,” and a hyphen. Previous panels have found that variations such as adding misspelled terms, a gTLD, and a hyphen are insufficient changes to differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel therefore finds that Respondent’s <piay-gogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <piay-gogle.com> domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). Complainant states that it has never authorized or given Respondent permission to use its marks. The WHOIS information for the <piay-gogle.com> domain name lists “asa dsye” as registrant. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no indication on the record that the respondent is commonly known by that domain name. See 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <piay-gogle.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii). Complainant claims that Respondent uses the disputed domain name to redirect Internet users to an inactive website. The Panel notes that the website resolving from Respondent’s disputed domain name features the message, “Welcome! Site <piay-gogle.com> just created. Real content coming soon.” Previous panels have found that using a confusingly similar domain name to resolve to a website featuring assertions of content that is soon to come is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that because of the fame of Complainant’s GOOGLE marks, Respondent has registered the <piay-gogle.com> domain name in bad faith. The Panel also notes that Complainant filed trademark applications for the GOOGLE PLAY mark in March of 2012, a year prior to Respondent’s registration of the disputed domain name. Previous panels have found bad faith where a respondent registers a domain name that is so obviously connected with a complainant’s mark that the registration by anyone other than complainant would suggest opportunistic bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). The Panel finds that Respondent’s use of the <piay-gogle.com> domain name indicates opportunistic bad faith under Policy ¶ 4(a)(iii).
Complainant contends that in light of the fame and notoriety of Complainant's GOOGLE marks, it is inconceivable that Respondent could have registered the <piay-gogle.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, further 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).
Respondent is not making an active use of the <piay-gogle.com> domain name. Previous panels have found that simply holding a domain name and failing to make an active use of a domain name signals bad faith use and registration under policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel finds that holding a domain name that incorporates Complainant’s famous GOOGLE mark is additional evidence of bad faith under Policy ¶ 4(a)(iii).
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 <piay-gogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 21, 2013
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