Google, Inc. v. Hristo Rusev
Claim
Number: FA0504000466022
Complainant is Google Inc. (“Complainant”) represented
by Rose A. Hagan, 1600 Amphitheatre Parkway, Mountain View, CA 94043.
Respondent is Hristo Rusev (“Respondent”), 139 Vitosha Blvd., Sofia, SO
1000 BG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <google-bg.com>, registered with Enom,
Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 21, 2005.
On
April 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <google-bg.com> 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-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@google-bg.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 makes the following assertions:
1. Respondent’s <google-bg.com>
domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or
legitimate interests in the <google-bg.com> domain name.
3. Respondent registered and used the <google-bg.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Google, was created in 1997 by Stanford Ph. D. candidates Larry Page and Sergey
Brin, and has since become one of the largest, most highly recognized, and
widely used Internet search engines in the world. Currently, the Google search
engine has an index of over 8 billion web pages. Google Inc. offers co-branded
web search solutions via partnerships with more than 130 companies in 30
different countries.
Complainant has
used the GOOGLE mark in commerce since 1997. Complainant has registered the
GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,806,075 issued January 20, 2004 and filed September 16, 1999) covering
search and communication services in classes 38 and 42 and (Reg. No. 2,884,502
issued September 14, 2004 and filed September 16, 1998) covering computer
hardware and software in class 9. Additionally, the Complainant owns
registrations for the GOOGLE mark throughout the world.
Respondent
registered the <google-bg.com> domain name on October 21, 2004.
Respondent’s domain name resolves to a website offering competitive
services.
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."
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.
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.
Complainant has
established rights in the GOOGLE mark through registration of the mark with the
USPTO. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the burden of refuting this assumption).
Respondent’s <google-bg.com>
domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent’s <google-bg.com> domain name incorporates
Complainant’s GOOGLE mark in its entirety and merely adds a hyphen and the
letters “bg” which is the postal abbreviation for “Bulgaria.” Such changes are
not enough to overcome a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Alticor Inc. v. Anton
Suprun, FA 341230 (Nat. Arb. Forum Nov. 29, 2004) (holding Respondent’s
<amway-ru.com> domain name to be confusingly similar to Complainants
AMWAY mark because the addition of the letters “ru” for the country of Russia
is not enough to alleviate the confusing similarity); see also Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to Complainant’s federally registered service mark,
“Kelson”; see also Am. Online,
Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) finding
that Respondent’s domain name <go2AOL.com> was confusingly similar to
Complainant’s AOL mark) and thus Policy ¶ 4(a)(i) is satisfied).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants.”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint. Thus, the Panel may accept all reasonable
allegations and assertions set forth by Complainant as true and accurate. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg.,
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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret Respondent’s failure to respond
as evidence that Respondent lacks rights and legitimate interests in the <google-bg.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting
a Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also
Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”).
Respondent is
using the confusingly similar domain name to operate a website that offers
competitive services. Such competitive use is not a use in connection with 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with Complainant, was not a bona fide offering of goods or services); see
also Avery
Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s famous mark. Thus, the Panel finds that Respondent has not
established rights and legitimate interests in the <google-bg.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s
WHOIS information implies that the respondent is ‘commonly known by’ the
disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <google-bg.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by using the domain name, which contains a
confusingly similar version of Complainant’s GOOGLE mark, to offer services
that compete with Complainant. Such use constitutes disruption and is evidence
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business).
Since Respondent’s <google-bg.com> domain name is confusingly
similar to Complainant’s GOOGLE mark, consumers accessing Respondent’s
domain name may become confused as to Complainant’s affiliation with the
resulting website. Thus, the Panel finds that Respondent’s commercial use of
the disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see
also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where the respondent directed Internet users seeking
the complainant’s site to its own website for commercial gain).
Furthermore, Respondent registered the <google-bg.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the GOOGLE mark due to Complainant’s registration of the mark with the USPTO.
Furthermore, the Panel infers that Respondent registered the disputed domain
name with actual knowledge of Complainant’s rights in the mark due to the
connection between Respondent’s website Complainant’s business. Registration of
a domain name featuring another’s mark despite actual or constructive knowledge
of the mark holder’s rights is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17,
2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
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-bg.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 3, 2005
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