Google Inc. v. Jason White / Unex Management Services Inc
Claim Number: FA1405001559249
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Jason White / Unex Management Services Inc (“Respondent”), represented by Aleksey Schudro, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleglass-buy.com>, registered with GoDaddy.com, LLC.
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.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2014; the National Arbitration Forum received payment on May 14, 2014.
On May 15, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <googleglass-buy.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 May 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2014 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@googleglass-buy.com. Also on May 16, 2014, 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.
A timely Response was received and determined to be complete on June 5, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on June 10, 2014.
On June 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Google Inc., owns the GOOGLE search engine. Complainant is also the owner of GOOGLE GLASS, a head-worn computing device.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE GLASS mark (Serial No. 85,723,835, filed on September 7, 2012), as well as with international trademark agencies including the Intellectual Property Office of New Zealand (“IPONZ”) (Reg. No. 955,183, registered March 14, 2012).
iii. In April 2012, Complainant announced its work on a new wearable computing device worn on the head. Such device, which was demonstrated to the public at least as early as June 2012, is marketed by Complainant under the GLASS mark.
iv. The GLASS device is not available for sale to the general public. Authentic GLASS devices can only be obtained directly from Google, and only within the framework of the invitation-only Glass Explorer program.
v. Respondent’s <googleglass-buy.com> domain name was registered on March 14, 2014 and it is confusingly similar to Complainant’s GOOGLE GLASS mark.
vi. Respondent has no rights or legitimate interests in the disputed domain name.
vii. Respondent is not commonly known by the disputed domain name.
viii. Respondent uses the disputed domain name to resolve to a website that falsely purports to offer Complainant’s GLASS device for sale for the payment of $1,990.
ix. Respondent has imitated the color scheme, design, and overall “look and feel” of Complainant’s website for the GLASS device.
x. Respondent has registered and is using the disputed domain name in bad faith.
xi. Respondent is deliberately attracting users to its websites by creating a likelihood of confusion with Complainant’s mark, all in order to defraud and commercially benefit from individuals who would mistakenly believe they are placing legitimate and effective orders for the GLASS device through Complainant.
xii. Respondent uses the disputed domain name in connection with a website that copies the color scheme, design, images from, and overall “look and feel” of Complainant’s website for the GLASS device.
xiii. It is inconceivable that Respondent created the disputed domain name without knowledge of Complainant’s rights in the mark.
B. Respondent
i. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
ii. Complainant has not provided any evidence that the offer on the resolving website is fraudulent. Respondent further contends that on 05/08/2014 (before the notice of the dispute), Respondent sold a Glass device with a frame
iii. Complainant’s GLASS devices can be obtained from a prominent number of resellers who purchase authentic devices directly from Complainant.
iv. Respondent believes that it should be considered as having a legitimate interest (under the Policy) resting on the Oki Data principles applicable to resellers and distributors.
v. Respondent should be considered as having a legitimate interest in the disputed domain name as “googleglass-buy” is descriptive of the business conducted there. Moreover, the disputed domain name resolves to a website offering Complainant’s products, and only Complainant’s.
vi. Respondent includes a disclaimer on the resolving page, which demonstrates that Respondent is not intending to mislead.
vii. The disputed domain name was not registered for the purpose of disrupting Complainant’s business, or to mislead Internet users for commercial gain.
viii. Respondent’s website prominently and clearly disclaims any affiliation with Complainant.
ix. Respondent does not deny knowledge of the Complainant’s marks at issue at the time the disputed domain name was created but argues instead that it uses the marks in the domain name only because it is indeed selling Google’s Glass devices and that the domain name is descriptive of the product that can be bought there.
C. Additional Submissions
i. Respondent’s new website, located at <iwant.glass> and redirected from the disputed domain name, also features graphics and videos downloaded from Complainant’s GLASS website and uses a layout and color scheme that are highly similar to those of Complainant’s site.
ii. As provided in the GLASS explorer terms and conditions, a buyer “may not commercially resell any device,” “may only purchase one device,” and “may not resell, rent, lease, transfer, or give its device to any other person.”
iii. The resolving website, as captured on May 8, 2014, did not include any disclaimer or notice that Respondent is not affiliated with Complainant. This disclaimer was added after Complainant’s UDRP Complaint was filed.
iv. Even assuming for the sake of argument that all of the GLASS units offered by Respondent in connection with the Domain Name are genuine products of Complainant, Respondent sells these devices without warning to buyers that the devices are being sold in violation of Google’s Terms and Conditions, and thus may stop functioning at any time.
Complainant Google Inc. is the owner of the notorious GOOGLE search engine. In April 2012, Complainant announced its work on a new wearable computing device worn on the head, marketed by Complainant under the GLASS mark. Although the GLASS device is not on sale to the general public yet, it has gained worldwide notoriety through extensive media coverage and is distributed by Complainant within the framework of the invitation-only Glass Explorer program. Complainant provided evidence of having trademark registrations for the GLASS and GOOGLE GLASS marks that predate the disputed domain name.
Respondent registered the <googleglass-buy.com> domain name on March 14,
2014. Although Respondent is not commonly known by the googleglass-buy.com domain name nor is it an affiliated distributor of Complainant, it describes itself as a (unofficial) reseller of Complainant’s products (Glass devices and accessories for Glass) and thus it claims to have a legitimate interest in registering and using the disputed domain name. Respondent further acknowledged that it had knowledge of the Complainant’s marks at issue at the time the disputed domain name was created and that it actually attempts to attract consumers to its website for commercial gain, although it denies that it has registered and used the disputed domain name in bad faith since it is a reseller and the use of the marks at issue is consistent with the Oki Data requirements.
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.
Complainant argues that it owns numerous trademark registrations for the notorious GOOGLE mark in jurisdictions throughout the world, many dating back to as early as 1998. Complainant also provided evidence that it owns trademark registrations for the GOOGLE GLASS and GLASS marks in numerous jurisdictions, including New Zealand (GOOGLE GLASS; issued March 14, 2012),Switzerland (GLASS; issued June 25, 2012), Iceland (GLASS; issued August 31, 2012), Australia (GOOGLE GLASS; issued October 11, 2012), Serbia (GLASS; issued November 23, 2012), the European Community (GOOGLE GLASS; issued January 22, 2013), Japan (GOOGLE GLASS; issued March 8, 2013), Croatia (GLASS; issued April 20, 2013), Hong Kong (GOOGLE GLASS; issued May 3, 2013), Norway (GLASS; issued May 21, 2013), and many other jurisdictions, as well as applications to register the marks in the United States and other countries. Complainant further notes that Each of those registrations and applications has an effective filing date that precedes the date that Respondent registered the disputed Domain Name. Therefore, the Panel holds that Complainant has rights in the marks 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 <googleglass-buy.com> domain name is confusingly similar to Complainant’s GOOGLE GLASS mark. Complainant claims that Respondent uses Complainant’s GOOGLE GLASS mark, while merely adding a hyphen and the generic term “buy.” The Panel finds that Respondent’s addition of a hyphen and a generic term does nothing to distinguish the domain name from the mark under Policy ¶ 4(a)(i). 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Complainant also alleges that Respondent adds a generic top-level domain (“gTLD”) to Complainant’s mark. Additionally, the Panel notes that Respondent omits the space in Complainant’s GOOGLE GLASS mark for the disputed domain name. The Panel determine that Respondent’s inclusion of a gTLD and elimination of a space is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Consequently, the Panel holds that Respondent’s <googleglass-buy.com> domain name is confusingly similar to Complainant’s GOOGLE GLASS mark under Policy ¶ 4(a)(i).
Respondent made no contentions with regards to Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Complainant has established the first element under the Policy
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). Complainant has not authorized Respondent to use its distinctive and famous GOOGLE and GOOGLE GLASS marks nor the "GLASS" logo. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in such names. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No.D2002-0946.
Complainant argues that Respondent is not commonly known by the <googleglass-buy.com> domain name. Complainant asserts that it has not authorized Respondent to register or use the disputed domain name. Additionally, Complainant contends that neither Respondent nor the disputed domain name website is affiliated with, associated with, and/or otherwise endorsed by Complainant. Complainant claims that the WHOIS information for the disputed domain name does not mention the disputed domain name or the GOOGLE GLASS mark. Rather, the Panel observes that the WHOIS record identifies “Jason White / Unex Management Services Inc” as the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Accordingly, the Panel finds that Respondent is not commonly known under the <googleglass-buy.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the <googleglass-buy.com> domain name to resolve to a website that falsely purports to offer Complainant’s GLASS device for sale for the payment of $1,990. In its Additional Submission, Complainant further asserts that under the terms and conditions of its authorized distribution program, GLASS Explorer, a buyer “may not commercially resell any device,” “may only purchase one device,” and “may not resell, rent, lease, transfer, or give its device to any other person.”. Complainant further asserts that breaching the aforementioned terms and conditions could result in the deactivation of the device. Therefore, Complainant contends that Respondent’s use of the disputed domain name without warning its customers about those terms is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent counterargues by stating that Complainant has not provided any evidence that the offer on the resolving website is fraudulent and also that Complainant’s GLASS devices can be obtained from a prominent number of resellers who purchase authentic devices directly from Complainant. Respondent further argues that it should be considered as having a legitimate interest (under the Policy) resting on the Oki Data principles applicable to resellers and distributors, which have been held equally applicable to unauthorized resellers and dealers.
Additionally, Respondent argues that it should be considered as having a legitimate interest in the disputed domain name as “googleglass-buy” is descriptive of the business conducted there.
In UDRP decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, it was held that to be bona fide within Policy ¶ 4(c)(i), the offering must meet several minimum requirements, such as:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the site to sell only the trade marked goods;
- the site must accurately disclose the registrant’s relationship with the trademark owner; ( it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents .E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); and
- Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
According to the evidence provided by Respondent, it seems that Respondent actually offers the goods at issue. Not only the disputed domain name lists the Glass device, but also includes pictures and information about it and its accesories. Respondent further provided copy of a sale receipt. Thus, the Panel believes the first requirement has been met.
The Panel believes Respondent also meets the second requirement, since it only
offers Complainant’s Google Glass and accesories and not other competing devices.
With respect to the third requirement, Complainant correctly argues that Respondent did not clearly disclose its relationship (or lack of, in this case) with the trademark owner. Not only Respondent used the GLASS logo, but it also copied Respondent’s website “look & feel” by displaying the same pictures that were in Complainant’s GLASS device’s website and by using the same fonts. Respondent neither inserted any disclaimer that could clarify that it had not affiliation or relationship with Complainant by the time Complainant filed the Complaint, according to evidence.
It was only after the Complainant was served of the Complaint that Respondent inserted disclaimers in its website, clarifiying that it is an independent reseller with no affiliation with Complainant. Moreover, also after the Complaint was served, Respondent redirected its <googleglass-buy.com> domain name to a new domain name <iwant.glass>, according to evidence filed by Complainant in its additional submission. By redirecting the disputed domain name to a another domain name, the Panel believes that Respondent is showing a lack of legitimate interest. Previous Panels have noted that redirecting a domain name to other domain names is not a bona fide offering of goods and services. See Nortel Networks Limited v. Dimitar Dimitrov d/b/a ICDSoft.com Claim Number: FA0411000360565, December 20, 2004 (Respondent uses the disputed domain names to redirect Internet users to a website that purports to sell new and used products manufactured by Complainant. Respondent’s use of domain names confusingly similar to Complainant’s registered mark to divert Internet users to a website that sells Complainant’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).).
The Panel does not deny that independent resellers under appropriate circumstances have rights to make use of trademarks to properly identify resale goods. Indeed, there may be circumstances in which such use would be appropriate in a domain name, such us, when the domain name holder sells legitimate parts of products of one single company, provided it complies with the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc.
In Oki Data, Respondent was an authorized Oki Data repair facility which had been offering OKIDATA goods and services since prior to the commencement of the case. Conversely, Respondent has not been authorized by Complainant to use its marks nor is it an official distributor.
Moreover, according to Complainant and evidence in this file, the Glass device is not being sold to the general public yet and is only sold by Complainant through its website. Even though respondent has proved that the Glass device is offered for sale by several resellers, none of the evidence filed by Respondent in its Annex I shows a reseller website that tries to emulate Complainant’s website. In this regard, the Panel notes that Respodent still copies the look & feel of Complainant’s webiste in its new domain name <iwant.glass>.
Being an unauthorized reseller, Respondent should have clearly disclosed that it had no affiliation with Complainant, and should have avoided to emule Complainant’s GLASS device’s website. This behaviour suggests that Respondent was seeking to pass off as Complainant or as an affiliated company or authorized distributor, which cannot be considered as a bona fide offering of goods and services. See Philip Morris Incorporated v. Alex Tsypkin, WIPO D2002-0946 (…use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com>, WIPO D2000-0847. Respondent cannot plausibly argue that he did not intentionally adopt his website presentation so as to benefit from the goodwill of the MARLBORO mark.).
Therefore, the Panel finds Respondent has no rights or legitimate interests in the disputed domain name. Complainant has established this element of its case.
Respondent has admitted that, by the time it registered the disputed domain name, it was well aware of Complainant’s famous marks. However, it argues instead that it uses the marks in the domain name only because it is indeed selling Google’s Glass devices and that the domain name is descriptive of the product that can be bought there.
In its Response, Respondent also acknowledges that It is true that it is attempting to attract consumers to its website for commercial gain, but it rules out that consumers could be confused as to the source, affiliation, etc. of the products sold in its website because it placed a disclaimer.
Even though being a reseller could constitute a bona fide offering of goods and services under the above mentioned circumstances (which, by the way, have not been met in this case), that circumstance does not prevent a finding of bad faith. See The Gillette Company v. RFK Associates Claim Number: FA0506000492867, July 28, 2005, (The fact that Respondent is a reseller of Complainant’s products does not prevent a finding of bad faith in registering and using the domain name. See Proctor & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 29, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who as not a licensee of the complainant, used the complainant’s mark in its domain name). See also Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name).
According to the facts and evidence the parties brought before this Panel, the Panel believes Respondent registered and currently uses the disputed domain name in bad faith because it seeks to mislead consumers into believing it has an affiliation with Complainant. See The Gillette Company v. RFK Associates Claim Number: FA0506000492867, July 28, 2005, (Complainant it was found to be bad faith registration and use for a respondent to register <duracellprocell.com> which was confusingly similar to the DURACELL mark since respondent intentionally attempted to attract Internet users to respondent’s web site for commercial gain by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site which was evidence of bad faith registration and use with regard to Policy, Paragraph 4(b)(iv). See Gillette Co. v. Haynes, FA 155904 (Nat. Arb. Forum June 4, 2003).
The above mentioned finding of bad faith remains although Respondent only sells Complainant’s products. See Utensilerie Assc. S.p.A v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (finding bad faith where “The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000).
Therefore, Complainant satisfies the requirements of Policy, Paragraph 4 (a)(iii).
Given that Complainant has satisfied all elements of the Policy the Panel finds Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleglass-buy.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor A. Manoff, Panelist
Dated: July 10, 2014
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