Google Inc. v. Luo ZhongLi / luozhongli
Claim Number: FA1512001652622
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Luo ZhongLi / luozhongli (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-cn.com>, registered with Key-Systems GmbH.
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 Forum electronically on December 16, 2015; the Forum received payment on December 16, 2015. The Complaint was received in both Chinese and English.
On December 17, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <google-cn.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 21, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 11, 2016 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-cn.com. Also on December 21, 2015, the Chinese language 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 January 20, 2016, 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 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, Google Inc., uses the GOOGLE mark in connection with its business as a leading provider of Internet-related products and services. Complainant has rights in the GOOGLE mark based on registration of the mark with trademark agencies throughout the world including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered January 20, 2004). Respondent’s domain <google-cn.com> is confusingly similar to the GOOGLE mark as the domain incorporates the whole mark and differs only through the addition of the generic top-level domain (“gTLD”) “.com,” a hyphen, and the geographic abbreviation “cn” meaning China.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use the GOOGLE mark, nor is there any evidence in the record to indicate that Respondent has been commonly known by the disputed domain name. Further, Respondent’s inactive use of the domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain in bad faith. Complainant claims that Respondent’s previous use of the domain as a fake search engine demonstrates an attempt to compete and disrupt Complainant’s business. Respondent’s failure to use the disputed domain in connection with an active website demonstrates bad faith. Further, based on the fame and prominence of the GOOGLE mark it is inconceivable that Respondent did not have knowledge of the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc. of Mountain View, CA, USA. Complainant was established in 1997 and since that time has continuously offered a broad array of internet related technological products and services under its GOOGLE mark. Google is the owner of numerous domestic and international registrations for its GOOGLE mark and variations thereon constituting the family of GOOGLE marks. Google’s international registrations include registration in China.
Respondent is Luo ZhongLi / luozhongli, of Wuhan, China. Respondent’s registrar’s address is listed as St. Ingbert, Germany. The Panel notes that the disputed domain name was created on or about July 5, 2014.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(f), 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 claims to have rights in the GOOGLE mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,806,075, registered January 20, 2004). Prior panels have held that registration of a mark with the USPTO demonstrates a registrant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the GOOGLE mark.
Complainant next contends that Respondent’s disputed <google-cn.com> domain name is confusingly similar to its GOOGLE mark. Respondent’s domain adds the gTLD “.com,” a hyphen, and the geographic abbreviation “cn” meaning China to the GOOGLE Mark. Prior panels have found the presence of the gTLD “.com” to be irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Similarly punctuation, such as hyphens, is not seen as a feature that distinguishes a domain from a mark to which the punctuation is attached. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Finally, panels have held that geographic identifiers do not prevent a finding of confusing similarity. See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”). The Panel here finds that Respondent’s <google-cn.com> is confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards 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), 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 contends that Respondent has not been authorized to use the GOOGLE mark or provided any evidence to indicate that Respondent has been commonly known by the disputed domain name. WHOIS information identifies Respondent as, “Luo ZhongLi” which does not resemble the disputed domain. Past panels have held a Respondent is not commonly known by a disputed domain based on WHOIS information and a lack of evidence supporting the Respondent’s claim. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel here finds that Respondent has not been commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website displaying the message, “Bad Request (Invalid Hostname).” Complainant asserts that Respondent’s domain was previously used as a fake search engine. Previous panels have found a respondent’s inactive use of a domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s use of the disputed domain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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 claims that Respondent’s bad faith can be shown through Respondent’s previous use of the domain as a search engine. According to a representative of Complainant the <google-cn.com> domain was previously used as a fake internet search engine. Previous panels have found bad faith where a respondent used a domain that is confusingly similar to another’s mark in a manner that competes with a complainant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). To the extent that Complainant previously used the disputed domain to compete with Complainant, the Panel find that Respondent’s use was in bad faith under Policy ¶ 4(b)(iii).
Complainant further claims that Respondent’s bad faith is evident from Respondent’s inactive use of the disputed domain name. As stated previously, the disputed domain currently resolves to a website that displays an error message. Past panels have held that failing to make an active use may demonstrate a respondent’s bad faith registration and use. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel here finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As 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 <google-cn.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 3, 2016
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