Google Inc. v. TOM NEUMANN
Claim Number: FA1606001680967
Complainant is Google Inc. ("Complainant"), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, United States. Respondent is TOM NEUMANN ("Respondent"), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <streetviewvr.net>, registered with eNom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2016; the Forum received payment on June 24, 2016.
On June 27, 2016, eNom, Inc. confirmed by email to the Forum that the <streetviewvr.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@streetviewvr.net. Also on June 28, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has dis charged 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 offers a wide range of Internet-related products and services, including a geographic imagery and mapping service that launched in May 2007. Complainant uses the STREET VIEW mark in connection with this service. Complainant owns numerous trademark registrations and applications for the STREET VIEW mark in the United States and other jurisdictions, including a U.S. registration issued in 2013. Complainant claims that its STREET VIEW mark has become famous as a result of longstanding, continuous, and extensive use, noting that a Google news search for "GOOGLE 'STREET VIEW'" retrieves more than 370,000 articles.
Respondent registered the disputed domain name <streetviewvr.net> in September 2015, and is using it in connection with a website purporting to offer virtual reality software that competes directly with Complainant's product and service. Respondent's website references Complainant in a manner that falsely implies his product is provided or endorsed by, or otherwise affiliated with, Complainant. Complainant states that it has not authorized Respondent to register or use the disputed domain name; that Respondent is not affiliated with, associated with, or otherwise endorsed by Complainant; and that Respondent is not commonly known by the name "Street View" or "Street View VR." Complainant alleges that Respondent's use of its mark is not a descriptive or nominative fair use because Respondent is using the mark as a brand to identify his own services. Complainant accuses Respondent of using Complainant's copyrighted images to create a competing product and pass himself off as Complainant. On these grounds Complainant contends that the disputed domain name is confusingly similar to its STREET VIEW mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.").
The disputed domain name <streetviewvr.net> corresponds to Complainant's registered mark STREET VIEW, omitting the space and adding the letters "VR," which describe an aspect of Complainant's product or service, and the ".net" top-level domain. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Samsung Electronics Co., Ltd. v. Private Registration, D2016-0492 (WIPO May 1, 2016) (finding <samsungvr.com> confusingly similar to SAMSUNG); Monster Energy Co. v. Timothy Davis, FA 1654480 (Forum Feb. 3, 2016) (finding <monsterenergygear.net> confusingly similar to MONSTER ENERGY). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. The only apparent use that Respondent has made of the domain name is for a website that purports to offer software that competes directly with Complainant's product and service, in a manner that falsely implies endorsement by or affiliation with Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., ER Marks, Inc. & QVC, Inc. v. 6 Ideas, FA 1417333 (Forum Jan. 11, 2012) (rejecting nominative use defense where domain name was used for website that used more of mark than necessary and falsely suggested sponsorship or endorsement by mark owner).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's use of the disputed domain name to promote competing goods or services falls squarely within these provisions of the Policy. In the absence of evidence to the contrary, the Panel infers that the domain name was registered for this bad faith use. The Panel therefore finds that Complainant has sustained its burden of proving that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <streetviewvr.net> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 2, 2016
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