Google Inc. v.
Sergey Gridasov
Claim Number:
FA0505000474816
Complainant is Google Inc. (“Complainant”), represented by Rose A. Hagan, 1600 Amphitheatre Parkway, Mountain View, CA 94043. Respondent is Sergey Gridasov (“Respondent”), Salnevostochny pr., d46, kv410, St. Petersburg 193230, RU.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2005.
On May 17, 2005, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the domain names <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> are registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 May 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 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@googkle.com, postmaster@ghoogle.com, postmaster@gfoogle.com and postmaster@gooigle.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 June 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names.
3. Respondent registered and used the <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., provides a search engine that has
an index of over eight billion web pages and provides an easy-to-use interface,
advanced search technology and a comprehensive variety of search tools. Complainant was created in 1997 by Stanford
Ph.D. candidates Larry Page and Sergey Brin.
Complainant holds a registration with the United States
Patent and Trademark Office (“USPTO”) for the GOOGLE mark (Reg. No. 2,806,075
issued January 20, 2004). Complainant
filed its application for registration on September 16, 1999. In addition, Complainant holds trademark
registrations for the GOOGLE mark in numous countries throughout the
world.
Complainant’s primary website is located at the
<google.com> domain name.
Complainant’s GOOGLE website was ranked as number five of the Top 25 Web
Properties for the month of March 2003 as found by Nielsen NetRankings. Additionally, Complainant has been
consistently honored for its technology and services and has received numerous
industry awards.
Respondent registered the <googkle.com> and <ghoogle.com> domain names on December 30, 2000. The <gfoogle.com> and <gooigle.com> domain names were registered by Respondent on January 12, 2001. The disputed domain names resolve to websites that attempt to download viruses, trojan horses and spyware to the users’ computers. Furthermore, the websites contain links to various products unrelated to Complainant.
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 that it holds a registration for the GOOGLE mark with the USPTO. Complainant’s registration of its mark with a governmental authority establishes presumptive rights in Complainant’s mark under the Policy. In the absence of a response from Respondent, the Panel is left with no evidence from Respondent to rebut Complainant’s prima facie case of rights. Therefore, the Panel finds that Complainant has established rights in the GOOGLE mark under Policy ¶ 4(a)(i). 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (“Complainant proves that it has rights in the trademark and service mark, DELL, as a result of Complainant’s registrations with the United States Patent and Trademark Office, which predate the registration of the disputed domain name.”). Furthermore, although both dates of registration for the disputed domain names predate Complainant’s registration of the GOOGLE mark with the USPTO, once Complainant’s mark has been registered, Complainant’s rights in the mark date back to the date the mark was originally filed with the USPTO. Complainant’s filing date of September 16, 1999 predates the registrations of all the disputed domain names. See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that the complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the USPTO).
Each of the <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names is comprised of a confusingly similar version of Complainant’s GOOGLE mark, which differs from the mark merely by the addition of one letter. Under the Policy, panels have widely held that the addition of one letter to a mark does not create a distinct domain name. Therefore, the Panel determines that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the domain name <efitnesswarehouse.com> is confusingly similar to the complainant’s FITNESS WAREHOUSE mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
When left with no response from Respondent to rebut any of Complainant’s contentions, 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 contends that Respondent does not have rights or legitimate interests in the <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names, which are confusingly similar to Complainant’s GOOGLE mark. Complainant’s assertion in this instance is sufficient to establish a prima facie case in support of its allegations and shift the burden to Respondent to provide evidence to rebut Complainant’s contentions. However, Respondent has failed to respond and has, therefore, failed to meet its burden. Thus, the Panel determines that Respondent lacks rights and legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent has no rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names).
Complainant asserts that Respondent is not commonly known by the disputed domain names, and Respondent has not provided a response or any other evidence to contradict Complainant’s arguments. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The disputed domain names resolve to websites that display hyperlinks to various products and services unrelated to Complainant. Additionally, Complainant asserts that these websites attempt to install malicious programs into the computers of those who visit the website. Respondent’s use of the disputed domain names to divert Internet users to Respondent’s own website that displays links to other websites unrelated to Complainant, presumably to earn commissions for the diversions, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The disputed domain names are all typosquatted versions of Complainant’s GOOGLE mark, which merely add one letter to Complainant’s mark. The Panel finds that Respondent’s use of misspelled versions of Complainant’s mark to attract Internet users interested in Complainant’s services to Respondent’s website does not constitute 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 of the domain names pursuant to Policy ¶ 4(c)(iii). See Nat'l Ass'n of Prof'l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site."); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.").
The disputed domain names resolve to a website that attempts to download malicious computer software into the computers of those who visit the website, and Respondent has provided no evidence to refute this assertion. The Panel finds the use of domain names that are confusingly similar to Complainant’s mark to attract Internet users to a website that may annoy or harm the users in some way, and that appears to serve no legitimate function, is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii). See Blue Cross and Blue Shield Ass’n v. Kraus, D2004-0756 (WIPO Nov. 15, 2004) (finding that using a domain name that is confusingly similar to a complainant’s mark to lure consumers into a mousetrapping situation is of little or no benefit to anyone and is not a legitimate noncommercial use of the domain name, because it harms the complainant for no reason other than spite or malice); see also Leonard Cheshire Found. v. Darke, D2001-0131 (WIPO Apr. 12, 2001) (finding that an intent to damage a complainant is “equivalent to an intent to tarnish the trademark and service mark at issue” and precludes any claim of rights or legitimate interests under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
One use Respondent is making of the disputed domain names is to attract Internet users who are interested in finding Complainant’s GOOGLE products and services by confusing the users as to Complainant’s affiliation with the content on Respondent’s website, some of which is commercial. The Panel assumes that Respondent earns compensation through its website from third parties by redirecting Internet users via links on Respondent’s websites. Thus, the Panel determines that Respondent’s use of the disputed domain names to benefit through a likelihood of confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).
The Policy lists four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith registration and use. However, this list is not intended to be comprehensive, and the Panel has, therefore, chosen to consider additional factors which support its finding of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
The Respondent appears to be using the domain names to divert Internet users to a website that uses tactics that may be harmful to the users’ computers. Because of the distinction acquired by Complainant’s famous mark and the confusing similarity between that mark and the disputed domain names, Internet users may assume some connection between Complainant and the content on the website. The Panel concludes that Respondent’s registration and use of the disputed domain names to expose Internet users to malicious software constitutes evidence of bad faith registration and use based on the findings of the panel in Foot Locker. Cf. Leonard Cheshire Found. v. Darke, D2001-0131 (WIPO Apr. 12, 2001) (“In the Panel’s view the registration and use of an identical or confusingly similar domain name for the purpose of damaging the owner of the trademark to which it is confusingly similar or to which it is identical … constitutes bad faith within the meaning of the Policy.”); see also Sunlane Media v. De Cassan, D2002-0093 (WIPO Mar. 27, 2002) (finding that the respondent’s admission that it had registered the disputed domain names with “gleeful malice aforethought” was alone sufficient to satisfy the requirements of bad faith under Policy ¶ 4(a)(iii)).
The disputed domain names registered by Respondent consist of typosquatted versions of Complainant’s famous GOOGLE mark. Thus, Respondent is engaging in the practice of “typosquatting” by taking advantage of a potential typographical error made by Internauts, intending to reach Complainant’s website at the <google.com> domain name, who inadvertently strike letters adjacent on the standard English-language keyboard to some letters in Complainant’s mark. Under the Policy, typosquatting is itself evidence of bad faith registration and use of the disputed domain name and the Panel finds no reason to distinguish Respondent’s use of the practice in this instance. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat Arb. Forum Oct. 15, 2003) (finding that the respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of the complainant’s ZONEALARM mark); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of the complainant’s THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks and that this practice “has been deemed behavior in bad faith”).
Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googkle.com>, <ghoogle.com>, <gfoogle.com> and <gooigle.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 5, 2005
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