Google Inc. v. Domain Admin / whoisprotection.biz
Claim Number: FA1408001576005
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Domain Admin / whoisprotection.biz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleekip.com>, registered with FBS 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2014; the National Arbitration Forum received payment on August 20, 2014.
On September 5, 2014, FBS Inc. confirmed by e-mail to the National Arbitration Forum that the <googleekip.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS 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 September 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@googleekip.com. Also on September 5, 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 September 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
Complainant uses the GOOGLE mark in a vast array of online and digital services and the mark is protected. The <googleekip.com> domain name is confusingly similar to the GOOGLE mark.
Respondent does not use the <googleekip.com> domain name in a bona fide or legitimately noncommercial manner because Respondent suggests, falsely, that Complainant approves of and is affiliated with Respondent’s offerings.
Respondent registered and is using the <googleekip.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on March 19, 2014. The Panel sees that Respondent sent an e-mail to NAF agreeing to transfer the domain name. However, Respondent requests that the transfer be effectuated no sooner than October 30, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Consent to Transfer
The National Arbitration Forum was copied on documentation submitted from Respondent, which is identified in this proceeding as “Other Correspondence,” dated September 10, 2014. In this document, Respondent purports to consent to the transfer of the <googleekip.com> domain name, albeit not until October 30, 2014. The Panel notes that it is under no obligation to acknowledge any such documents.
The Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel also finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it analyzes 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 uses the GOOGLE mark in connection with its vast online and digital operations. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). The Panel agrees that this registration satisfies the Policy ¶ 4(a)(i) requirement to show rights in a trademark. 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 also claims that the <googleekip.com> domain name is confusingly similar to the GOOGLE mark. Complainant notes that “ekip” is Turkish for the word “team.” The Panel thus concludes that adding a generic term and the generic top-level domain “.com” does little to help Respondent create a notable different domain name vis-à-vis the GOOGLE mark. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
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.”).
Complainant claims that Respondent does not use the name <googleekip.com> in such a way that would cause the public to believe Respondent was commonly known by such a name. Complainant notes that although the domain name’s website identifies Respondent as “GOOGLE LLANLAR EKIBI” (translated: Google Advertisement Team) Complainant has never associated with Respondent and there is no information to back up this alleged identity. The Panel concludes Respondent is simply not known as the <googleekip.com> domain name in the manner intended under Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).
Complainant argues further that there is nothing legitimate about the content viewable on the <googleekip.com> domain name’s website. The Panel notes the domain name resolves to a website proclaiming to be “Google Zeitgeist 2013” and providing Turkish language GOOGLE-centric content. See Compl., at Attached Ex. 12. This Panel agrees that such a ploy as passing off as Complainant is unacceptable and outside the parameters of Policy ¶¶ 4(c)(i) or (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant further argues that using the GOOGLE marks on the domain name’s website, as seen in Exhibit 11, shows that Respondent is trying hard to profit off the likelihood Internet users will be confused as to Complainant’s association with the <googleekip.com> domain name. In AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), the panel found that use of a complainant’s mark in the content of a disputed domain name’s website enhanced the likelihood of confusion. Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant further claims Respondent registered the <googleekip.com> domain name with actual knowledge of Complainant’s rights in the GOOGLE mark. The Panel agrees that as Complainant plainly uses the GOOGLE mark throughout the domain name’s website, there is evidence that Respondent registered the domain name in bad faith and with actual knowledge of Complainant’s rights. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleekip.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 8, 2014
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