Google Inc. v. serap ozk
Claim Number: FA1405001562193
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is serap ozk (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleglass-apps.info> and <classgoogleglass.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2014; the National Arbitration Forum received payment on May 30, 2014.
On May 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <googleglass-apps.info> and <classgoogleglass.com> domain name are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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-apps.info, and postmaster@classgoogleglass.com. Also on June 2, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has long held registration to GOOGLE and has also built a substantial amount of goodwill around the GOOGLE GLASS mark in recent years. Complainant’s GOOGLE mark is best evidenced by trademark registrations, such as that with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,806,075, registered January 20, 2004). Complainant’s GOOGLE GLASS mark is best evidenced by both trademark registrations in various countries as well as substantial marketing and development costs plus the GOOGLE GLASS product’s substantial market awareness. See Compl., Exs. 10–12, 14–16; see, e.g., Australia Reg. No. 1,513,680 registered Oct. 11, 2012; India Reg. No. 2,393,601 registered Sept. 11, 2012. Respondent’s <googleglass-apps.info> and <classgoogleglass.com> domain names both add generic terms and irrelevant generic top-level domains ("gTLDs") to the marks.
2. Respondent is known by neither of the <googleglass-apps.info> and <classgoogleglass.com> domain names. Complainant has not otherwise authorized Respondent’s use of the marks in domain names. Respondent’s use of these domain names is not bona fide as both domain names resolve to parked hyperlink listings. See Compl., at Attached Ex. 19–20.
3. Respondent profits through a likelihood of confusion by using these two confusingly similar domain names to host monetized hyperlinks. Further, it is inconceivable that Respondent registered these domain names without actual knowledge of the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc., of Mountain View, CA, USA. The GOOGLE name and company were created in 1997 by Larry Page and Sergey Brin. The GOOGLE name has been continuously used since that time primarily as a search engine available to computer users around the world. Complainant’s primary website is <google.com> but Complainant owns and operates hundreds of additional GOOGLE-formative domain names, including nearly all top level country code domains solely consisting of GOOGLE. Complainant owns numerous domestic and foreign trademark registrations for the GOOGLE mark dating back as early as 1998. In April of 2012, Complainant announced its work on a new wearable computing device worn on the head, advertising and publicizing the new products under the GLASS mark. Complainant owns national registrations for the GLASS mark in countries throughout the world, and has applied to register the mark in both the United States and the European Union.
Respondent is Serop Ozk of Bethpage, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Email correspondence was received from Respondent’s listed contact email stating; “I didn't use this domain names and I don't want to be owner anymore.” The name of the purported sender of the email is not the same as the Respondent. The domain names were registered on or before June 12, 2013.
Preliminary Issue: Consent to Transfer
There is correspondence from someone that purports to consent to the transfer of the <googleglass-apps.info> and <classgoogleglass.com> domain names to Complainant. The Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. The Panel is of the view that the issue of transferring the disputed domain name deserves to be evaluated in accordance with the UDRP Policy and findings made pursuant to such an analysis. Therefore, the Panel will analyze the case under the elements of the UDRP.
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 has long held registration to GOOGLE and has also built a substantial amount of goodwill around the GOOGLE GLASS mark in recent years. Complainant uses the GOOGLE GLASS mark in connection with a wearable computing device worn on the head. Complainant’s GOOGLE mark is evidenced by trademark registrations, such as that with the USPTO (e.g., Reg. No. 2,806,075, registered January 20, 2004). Complainant’s GOOGLE GLASS mark is evidenced by trademark registrations in various countries as well as substantial marketing and development costs behind the GOOGLE GLASS market awareness campaigns. See e.g., Australia Reg. No. 1,513,680 registered Oct. 11, 2012; India Reg. No. 2,393,601 registered Sept. 11, 2012. The Panel finds that Complainant’s showing of its trademark registrations of the GOOGLE and GOOGLE GLASS marks around the world is sufficient evidence to satisfy Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further claims Respondent’s <googleglass-apps.info> and <classgoogleglass.com> domain names both add generic terms and irrelevant gTLDs to the marks. The Panel finds that neither the terms “class” nor “-apps” add any distinction to these domain names, nor does the deletion of the mark’s spacing or addition of a gTLD avoid confusing similarity. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). The Panel here finds that the <googleglass-apps.info> and <classgoogleglass.com> domain names are confusingly similar to the GOOGLE GLASS mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims Respondent is not known by either of the <googleglass-apps.info> and <classgoogleglass.com> domain names. Complainant states it has not otherwise authorized Respondent’s use of its marks in domain names. The Panel notes that neither the WHOIS information nor Respondent’s own e-mail to the Forum illustrate any association so as to find for Respondent under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant further claims Respondent’s use of these domain names is not bona fide as both domain names resolve to parked hyperlink listings. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found no Policy ¶ 4(c)(i) bona fide offering or Policy ¶ 4(c)(iii) legitimate noncommercial use when the domain name was used to house a website of commercial advertisements. The Panel here finds that both the <googleglass-apps.info> and <classgoogleglass.com> domain names are held without rights pursuant to Policy ¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant suggests Respondent profits through a likelihood of confusion by using these two confusingly similar domain names to host monetized hyperlinks. The Panel finds that such uses imply Policy ¶ 4(b)(iv) bad faith because Respondent is using the domain names to profit through hyperlink advertisements. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <googleglass-apps.info> and <classgoogleglass.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 14, 2014
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