Google Inc. v. esin bilge y?lmazer / N/A
Claim Number: FA1407001569271
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, Washington D.C., USA. Respondent is esin bilge y?lmazer / N/A (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleilanlari.com> and <googleilanlarekibi.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; UK-2 Limited.
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 11, 2014; the National Arbitration Forum received payment on July 11, 2014.
On July 12, 2014; July 14, 2014; Jul 15, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com; UK-2 Limited confirmed by e-mail to the National Arbitration Forum that the <googleilanlari.com> and <googleilanlarekibi.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com; UK-2 Limited and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com; UK-2 Limited has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; UK-2 Limited 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@googleilanlari.com, postmaster@googleilanlarekibi.com. Also on July 21, 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 15, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googleilanlari.com> and <googleilanlarekibi.com> domain names, the domain names at issue, are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i) and maintains one of the world’s largest collections of searchable documents. It provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, allowing Internet users to search for and find a wide variety of content in many different languages. Complainant owns registrations for the GOOGLE mark with the United States Patent and Trademark Office (e.g., Reg. No. 2,806,075, registered January 20, 2004). Respondent’s <googleilanlari.com> and <googleilanlarekibi.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent adds the terms “ilanlari,” translated from Turkish means “ads,” or “ilanlar ekibi” which translated from Turkish means “advertisements team” or “ad team.” Respondent also adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <googleilanlari.com> and <googleilanlarekibi.com> domain names, and Complainant has not authorized Respondent to register or use the disputed domain name or Complainant’s marks in any way. Respondent is in no way affiliated with or endorsed by Complainant. The WHOIS information for Respondent’s disputed domain name makes no indication that Respondent is commonly known by the disputed domain name. Additionally, Complainant’s registrations for the GOOGLE mark predate Respondent’s registrations of the disputed domain names. Respondent deliberately chose the famous GOOGLE mark in attempt to trade off of the goodwill embodied in Complainant’s GOOGLE mark, and to create an association with complainant. Respondent uses the disputed domain names to resolve to a website that purports to offer paid Internet advertising and search engine optimization services. Respondent thus intends to divert Internet users to its own websites, which compete directly with Complainant’s Internet advertising business. Respondent’s <googleilanlarekibi.com> domain name also offers business service listings that provide similar information to consumers and are employed by internet users in a similar manner.
Respondent registered and is using the <googleilanlari.com> and <googleilanlarekibi.com> domain names in bad faith. Respondent’s use of the disputed domain names competes with Complainant and thereby disrupts Complainant’s business in bad faith by diverting Internet users away from Complainant’s business. Respondent uses the disputed domain names to attract Internet users to Respondent’s websites, where it offers Internet advertising and search engine optimization services, which compete with Complainant’s services, and Respondent commercially profits by confusing Internet users and diverting them away from Complainant’s website. Respondent was aware of Complainant’s famous GOOGLE mark when Respondent registered the disputed domain names. The <googleilanlari.com> domain name was registered on April 24, 2013, and the <googleilanlarekibi.com> domain name was registered on September 4, 2013.
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 maintains one of the world’s largest collections of searchable documents, and it provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, allowing Internet users to search for and find a wide variety of content in many different languages. Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i) and owns registrations for the GOOGLE marks, for example, Reg. No. 2,806,075, registered January 20, 2004 with the USPTO. It is irrelevant whether complainant has registered a given mark in the country of respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel therefore finds that Complainant’s registrations for the GOOGLE marks with the USPTO and other trademark agencies around the world are sufficient to establish Policy ¶ 4(a)(i). See Google Inc. v. serap ozk, FA 1562193 (Nat. Arb. Forum July 14, 2014) (finding Complainant established rights in the GOOGLE and marks through its various registrations internationally.).
Respondent’s <googleilanlari.com> and <googleilanlarekibi.com> domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). Respondent adds the terms “ilanlari”, which translated from Turkish means “ads,” or “ilanlar ekibi” which translated from Turkish means “advertisements team” or “ad team.” Adding generic terms to the GOOGLE mark does not differentiate the disputed domain name from the mark. 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). Also, Respondent adds the gTLD “.com” which is irrelevant to a confusingly similar analysis. 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”). Based on prior UDRP proceedings, the Panel concludes that Respondent’s <googleilanlari.com> and <googleilanlarekibi.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
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 <googleilanlari.com> and <googleilanlarekibi.com> domain names under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to register or use the disputed domain name or Complainant’s marks in any way, and Respondent is in no way affiliated with or endorsed by Complainant. The WHOIS information for Respondent’s disputed domain name makes no indication that Respondent is commonly known by the disputed domain name. The WHOIS information lists “esin bilge y?Imazer” as registrant of the disputed domain names. The panel in Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Nat. Arb. Forum Oct. 29, 2013) held that some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record.” Likewise, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) the panel concluded that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Taking these prior panel holdings into consideration, the Panel concludes that Respondent is not commonly known by the <googleilanlari.com> and <googleilanlarekibi.com> domain names under Policy ¶ 4(c)(ii).
Respondent is not making a bona fide offering nor a legitimate noncommercial or fair use of the disputed domain names. Respondent deliberately chose the famous GOOGLE mark in attempt to trade off of the goodwill embodied in Complainant’s GOOGLE mark and to create a false association with Complainant. Respondent uses the disputed domain names to resolve to a website that purports to offer paid Internet advertising and search engine optimization services. Respondent thus intends to divert Internet users to its own websites that compete directly with Complainant’s Internet advertising business. Both disputed domain names resolve to websites that predominantly use Complainant’s multicolored GOOGLE mark. Respondent’s <googleilanlarekibi.com> domain name resolves to a website with the heading “Google Zeitgeist 2013” and provides alleged information regarding its internet advertising and also displays a picture of a GOOGLE award, which aims at further confusing Internet users as to Complainant’s association with the resolving website.
The <googleilanlari.com> domain name’s resolving website offers business service listings that provide similar information to consumers and is employed by Internet users in a similar manner. The website resolving from the <googleilanlari.com> domain name displays Complainant’s GOOGLE mark prominently, in addition to a list of businesses, and the apparent option to “add your company by filing out the form below.” Respondent offers services including, study guides, web designs, web updates, domain and hosting services, optimization services, and sponsored links. The panel in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), previously held that the respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the complainant’s business, was not a bona fide offering of goods or services. Additionally, the panel in Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) concluded that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site. The Panel therefore concludes that Respondent’s use of both the <googleilanlari.com> and <googleilanlarekibi.com> domain names to resolve to websites purportedly associated with Complainant, and competing with Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <googleilanlari.com> and <googleilanlarekibi.com> domain names in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain names competes with Complainant and thereby disrupts Complainant’s business in bad faith by diverting Internet users away from Complainant’s business. Past panels have found the registration of domain names that are confusingly similar to complainants’ marks, for the purpose of linking to the websites of complainants’ competitors, to represent bad faith registration and use under Policy ¶ 4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s <googleilanlari.com> and <googleilanlarekibi.com> domain names improperly disrupt Complainant’s business and that Respondent’s registration and use of the domains are illustrative of bad faith according to Policy ¶ 4(b)(iii).
Respondent uses the disputed domain names to attract Internet users to Respondent’s websites, where it offers Internet advertising and search engine optimization services which compete with Complainant’s services. Respondent commercially profits by confusing Internet users and diverting them away from Complainant’s website and to Respondent’s own websites. The Panel finds that Respondent created such confusion in an attempt to achieve some sort of pecuniary gain at the expense of Complainant, and the Panel holds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
It appears that Respondent had actual knowledge of Complainant’s marks based on Complainant’s extensive media coverage and recognition, and the fame of its marks. The Panel in Google v. Abercrombie 1, FA0101579 (Nat. Arb. Forum Dec. 10, 2001) previously held that “because of the famous and distinctive nature of Complainant’s GOOGLE mark, respondent is thought to have been on notice of the existence of Complainant’s mark at the time respondent registered the infringing <googld.com> domain name.” Additionally, the panel in Google Inc. v. Publica, FA1294447 (Nat. Arb. Forum Jan. 11, 2010) concluded that “the fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the registrant created the Domain Name independently.” The Panel therefore agrees that Respondent had actual notice of Complainant’s marks at the time Respondent registered the <googleilanlari.com> and <googleilanlarekibi.com> domain names based on the confusing similarity in Respondent’s disputed domain name, the presence of Complainant’s multicolored GOOGLE mark on Respondent’s resolving websites, and the fame and recognition of Complainant’s marks.
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 <googleilanlari.com> and <googleilanlarekibi.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 16, 2014
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