Google Inc. v. Private Protection Co.LTD
Claim Number: FA1407001568361
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Private Protection Co.LTD (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glassforsnap.com>, registered with Todaynic.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2014; the National Arbitration Forum received payment on July 3, 2014.
On July 14, 2014, Todaynic.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <glassforsnap.com> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. 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 July 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@glassforsnap.com. Also on July 15, 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 August 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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:
Respondent’s <glassforsnap.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GLASS mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant’s company was created in 1997 and since that time has become the provider of Internet search engine services, as well as a wide range of Internet-related products and services. In April 2012, Complainant announced its work on a new wearable computing device worn on the head, and in June 2012, it was demonstrated to the public. Complainant owns registrations for the GLASS mark under Policy ¶ 4(a)(i) with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,797,151 registered June 1, 2010) as well as in numerous countries internationally. Respondent’s <glassforsnap.com> domain name is confusingly similar to Complainant’s GLASS mark. Respondent adds the terms “for” and “snap” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <glassforsnap.com> domain name. The WHOIS record for Respondent’s disputed domain name identifies the registrant as “Private Protection Co. LTD.” Additionally, the record states that Respondent registered the disputed domain name on May 21, 2014, which was after Complainant had already acquired rights in the GLASS mark. Respondent’s disputed domain name resolves to a website falsely informing users that they “won a Google Glass from Snapchat,” and offers participation in Complainant’s Glass Explorer program in exchange for downloading and installing one of Respondent’s apps. When the Internet user clicks the “ok” button to “claim” the device, he is directed to a website that prominently features Complainant’s GLASS mark and an image of Complainant’s GLASS product, as well as requests for personally identifying information.
Respondent registered and is using the <glassforsnap.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s GLASS mark when Respondent registered the disputed domain name. Respondent’s resolving website displays photographs of Complainant’s GLASS device and makes false offers of a free GLASS device and participation in the Glass explorer program. Respondent’s use of the disputed domain name to induce unwary Internet users into downloading and installing Respondent’s apps is disruptive to Complainant’s business and has potential to seriously damage Complainant’s reputation and goodwill. Respondent uses Complainant’s marks and product to attract Internet users to its website by creating a substantial likelihood of confusion in order to deceive and commercially benefit from individuals who would mistakenly believe they are downloading and installing Complainant’s apps in order to comply with Respondent’s offer. The domain name at issue was registered on May 21, 2014.
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 was created in 1997 and since that time has become the provider of Internet search engine services as well as a wide range of Internet-related products and services. In April 2012, Complainant announced its work on a new wearable computing device worn on the head and, in June 2012, it was demonstrated to the public. Complainant owns registrations for the GLASS mark under Policy ¶ 4(a)(i) with the USPTO (Reg. No. 3,797,151 registered June 1, 2010) as well as in numerous countries internationally. Respondent resides in China according to the WHOIS record. Nonetheless, previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Consistent with such precedent, the Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the GLASS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <glassforsnap.com> domain name is confusingly similar to Complainant’s GLASS mark. Respondent merely adds the terms “for” and “snap” as well as the gTLD “.com.” The term “snap” is an abbreviation of “snapshot” as well as a term that refers to impermanent photos “snaps” taken with the SNAPCHAT application. In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) the panel held that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. This Panel, agrees with case precedent and concludes that the addition of the terms “for” and “snap” as well as the gTLD “.com” to Respondent’s <glassforsnap.com> domain name do not distinguish it from Complainant’s GLASS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <glassforsnap.com> domain name. The WHOIS record for Respondent’s disputed domain name identifies the registrant as “Private Protection Co. LTD.” Additionally, Complainant asserts that the record states that Respondent registered the disputed domain name on May 21, 2014, which was after Complainant had already acquired rights in the GLASS mark. Respondent failed to submit a response in the proceeding and, therefore, has not contested Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Respondent’s disputed domain name resolves to a website falsely informing users that they “won a Google Glass from Snapchat,” and offers participation in Complainant’s Glass Explorer program in exchange for downloading and installing one of Respondent’s apps. When the Internet user clicks the “ok” button to “claim” the device, he is directed to a website that prominently features Complainant’s GLASS mark and an image of Complainant’s GLASS product, as well as requests for personally identifying information. Prior panels have concluded that using a confusingly similar domain name to resolve to a website attempting to appear as complainant for financial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent has no rights in the <glassforsnap.com> domain name under ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <glassforsnap.com> domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name to induce unwary Internet users into downloading and installing Respondent’s apps is disruptive to Complainant’s business and has the potential to seriously damage Complainant’s reputation and goodwill. The panel in Google Inc. v. SP, FA 395068 (Nat. Arb. Forum) found that respondent’s use of the disputed domain name to compete with complainant and disrupt its business by offering similar search engine services as a website that mimics complainant’s website is evidence of bad faith registration and use of the domain name. The Panel agrees with the prior panel holding and finds that Complainant’s competing use to fraudulently offer alleged products of complainant’s to Internet users indicates bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent uses Complainant’s marks and product to attract Internet users to its website by creating a substantial likelihood of confusion in order to deceive and commercially benefit from individuals who would mistakenly believe they are downloading and installing Complainant’s apps in order to comply with Respondent’s offer. Prior panels have concluded that using a confusingly similar domain name to resolve to a website offering products and services that appear to be complainant’s and thereby a respondent commercially profits is evidence of bad faith use and registration. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). The Panel concludes that Respondent registered and is using the <glassforsnap.com> domain name in bad faith to attract and confuse Internet users for commercial purposes.
Based on the content of Respondent’s resolving website, it is clear that Respondent had actual knowledge of Complainant’s GLASS mark when Respondent registered the disputed domain name. Respondent’s resolving website displays photographs of Complainant’s GLASS device and makes false offers of a free GLASS device and participation in the Glass explorer program. Complainant’s trademark registrations for the GLASS mark existed well before the registration of the disputed domain name. Respondent also had constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glassforsnap.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 8, 2014
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