Google Inc. v. Przemyslaw Przespolewski
Claim Number: FA1511001646031
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Przemyslaw Przespolewski (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google.hiv> ('the Domain Name'), 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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2015; the Forum received payment on November 9, 2015.
On November 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <google.hiv> 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 November 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2015 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@google.hiv. Also on November 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s contentions can be summarised as follows:
The Complainant's Google name and company were created in 1997. Since that time the GOOGLE search engine has become one of the most highly recognised and widely used Internet search services in the world. The Complainant's primary web site is located at google.com, but it owns and operates web sites at hundreds of additional GOOGLE-formative domain names, including nearly every top level country code domain consisting solely of the GOOGLE mark. The Complainant offers a wide range of Internet related products and services. The GOOGLE mark has been found to be one of the top five most valuable global brands since 2001. Google is one of the most visited web properties in the world with hundreds of millions of unique visitors per month. The Complainant has received numerous industry awards. The GOOGLE mark exclusively identifies the Complainant and its services. Due to widespread and substantial international use the GOOGLE mark and name have become famous.
The Complainant owns numerous trade mark registrations for the GOOGLE mark in jurisdictions throughout the world many dating back to as early as 1998.
The Domain Name registered in 2015 protected by a privacy service resolves to a blank placeholder page. Panels have consistently held that passive holding of a domain name constitutes evidence of no rights and legitimate interests as well as bad faith registration and use under the Policy.
Respondent has been soliciting bids for the Domain Name. Complainant offered a reasonable sum in an attempt to amicably acquire the Domain Name. Respondent noted that it was collecting offers on the Domain Name and instead offered to sell the domain name for no less than 1.5 million USD. Respondent argued that its high asking price was appropriate because the Domain Name is 'the name with Google in it’ Such conduct indicates a lack of rights and legitimate interests and is also evidence of bad faith registration and use under the Policy.
The Respondent also offered to sell the yahoo.hiv domain name to Complainant for no less than USD $1,140,000 or both domain namestogether for USD $3,200,000.
The Domain Name is identical to the famous GOOGLE mark and merely adds the generic top level domain .hiv. It is well established that the addition of a generic top level domain does nothing to relieve the confusing similarity of the Domain Name under Policy 4(a)(i) As such the Domain Name is confusingly similar to the Complainant’s trade mark.
Given Complainant’s widespread and prominent use of the GOOGLE mark as well as the distinctiveness and fame of that mark there is no question that the Respondent is familiar with and attempting to trade off of the goodwill embodied in the Complainant’s famous GOOGLE mark and has deliberately chosen the Domain Name to create and association with the Complainant. Respondent’s explanation that the USD $1,500,000 asking price for the Domain Name is motivated by the fact that it is 'the name with Google in it' unambiguous demonstrates the Respondent is familiar with the GOOGLE mark and its tremendous value. All of this is strong evidence that the Respondent does not have rights or legitimate interests in the Domain Name
The Respondent has not authorised the Respondent to register or use the Domain Name nor is the Respondent affiliated with, associated with or otherwise endorsed by the Complainant.
Respondent is not commonly known by the Domain Name.
Respondent’s offer to sell the Domain Name for USD $1,500,000 is without doubt in excess of any out of pocket expenses incurred by the Respondent in connection with the Domain Name and the Respondent has registered domain names containing famous brands for the sole propose of reselling them to the highest bidder.
The Respondent is also making passive use of the Domain Name.
This conduct is not bona fide offering of goods and services nor a legitimate non commercial or fair use.
The Domain Name registered and is using the Domain Name opportunistically and in bad faith. Respondent’s negotiations to sell the Domain Name to the highest bidder for a sum well in excess of out of pocket costs show it is well aware of the Complainant and its rights in the GOOGLE mark. The offer to sell them along with a domain name containing the famous third party YAHOO mark shows a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. He did send a few informal e mails with questions to the Centre stating the page on the Domain Name would remain blank.
The Complainant owns numerous trade mark registrations for the GOOGLE mark in jurisdictions throughout the world many dating back to as early as 1998.
Respondent has been soliciting bids for the Domain Name. Respondent offered to sell the Domain Name for no less than 1.5 million USD. Respondent stated that its high asking price was appropriate because the Domain Name is 'the name with Google in it’ . The Respondent also offered to sell the yahoo.hiv domain name to Complainant for no less than USD $1,140,000 or USD $3,200,000 for both domain names.
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.”).
The Domain Name consists of a name identical to the Complainant's famous registered mark GOOGLE plus the gTLD designation .hiv. The distinctive and dominant part of the Domain Name is the Complainant’s well known GOOGLE mark. The use of the term .hiv, commonly understood to relate to the sexually communicable disease AIDS, does not by its addition distinguish the Domain Name from the Complainant’s mark. As such the panelist holds that the Complainant satisfies this first limb of the Policy.
The Respondent does not explain why he has registered a domain name consisting of the Complainant's trade mark in the .hiv gTLD except to refer to its value because it contains the Complainant’s mark.
The Respondent does not appear to have any trade marks associated with the name GOOGLE. There is no evidence that he is commonly known by this name and he does not have any consent from the Complainant to use this name. He does not appear to have used the Domain Name for any bona fide offering of services or for any use. See Hewlett Packard Co. v Shemesh, FA 434145 (Nat Arb Forum Apr 20, 200) ('The Panel finds that the failure to make an active use of a domain name is not a bona fide offering of goods or services pursuant to Policy 4 (c) (i) or a legitimate non commercial or fair use pursuant to Policy 4 (c)(iii) Further the Respondent appears to be offering to sell the Domain Name and other domain names containing famous trade marks for sums exceeding his out of pocket costs. Panlists have also interpreted this as indicative of lack of rights and legitimate interests. See Drown Corp. v Premier Wine & Spirits FA 616805 (Nat Arb Forum Feb 13, 2006) The Panel interprets the Respondent's offer to sell the domain name for US$1,500,000 as evidence that the Respondents lacks rights and legitimate interests in the Domain Name pursuant to Policy 4(a)(ii).
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i))
The Respondent has offered to sell the Domain Name to the Complainant for 1.5 million US dollars and has also offered to sell the domain yahoo.hiv containing a trade mark belonging to a competitor of the Complainant to the Complainant for 1.14 million USD or both for USD$3.2. The Respondent has given no satisfactory reason why it has a legitimate interest in a domain name comprising the Complainant's trade mark GOOGLE and the gTLD .hiv.. Accordingly, the Panel finds on the balance of probabilities based on the evidence that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark GOOGLE or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name; See World Wrestling Fed'n Entm't, Inc v Bosman D99-0001(WIPO Jan 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs). The Panel, therefore, finds that bad faith has been demonstrated under s 4(b)(i) of the Policy. As such there is no need to further consider contentions of the Complainant with regard to additional grounds for bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google.hiv> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<December 13, 2015>>
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