Google Inc. v. Henry Nowak
Claim Number: FA1111001417802
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Henry Nowak (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net>, registered with Godaddy.Com, Inc.
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 November 30, 2011; the National Arbitration Forum received payment on December 1, 2011.
On November 30, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 December 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2011 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@golgle.biz, postmaster@golgle.info, postmaster@goodgle.net, postmaster@googl.info, postmaster@googler.org, postmaster@googlr.biz, postmaster@googo.net, postmaster@gooler.net, postmaster@gooogle.biz, postmaster@wwwgoogld.com, postmaster@ggmaill.com, postmaster@gmaill.net, postmaster@youtbue.net, postmaster@youtrube.net, postmaster@youtubew.com, postmaster@youtubew.net, and postmaster@youtuibe.net. Also on December 2, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2012, 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" 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 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 <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, and <wwwgoogld.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
Respondent’s <ggmaill.com> and <gmaill.net> domain names are confusingly similar to Complainant’s GMAIL mark.
Respondent’s <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names are confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names.
3. Respondent registered and used the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., holds numerous trademark registrations for the GOOGLE mark. Complainant has registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,884,502 registered September 14, 2004), and uses the mark in connection with an internet search engine service. Complainant also holds trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the GMAIL mark (e.g. Reg. No. 2,493,281 registered April 14, 2004) and with IP Australia (“IPA”) for the YOUTUBE mark (e.g. Reg. No. 897,049 registered March 1, 2006).
With respect to the disputed domain names containing the GOOGLE mark, Respondent, Henry Nowak, registered the <golgle.biz> and <golgle.info> domain names on February 15, 2006, the <goodgle.net>, domain name on September 13, 2005, the <googl.info> domain name on September 12, 2005, the <googler.org> domain name on September 17, 2005, the <googlr.biz> domain name on April 26, 2008, the <googo.net> domain name on November 8, 2005, the <gooler.net> domain name on October 10, 2005, the <gooogle.biz> domain name on May 17, 2006, and the <wwwgoogld.com> domain name on September 16, 2005.
With respect to the disputed domain names containing the GMAIL mark, Respondent registered the <ggmaill.com> and <gmaill.net> domain names on April 14, 2006.
With respect to the disputed domain names containing the YOUTUBE mark, Respondent registered the <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names on August 24, 2007, and the <youtubew.com> domain name on March 3, 2006.
The <googler.org> domain name resolves to a blank page consisting of only the domain name in text. The <youtubew.com> domain name resolves to a third-party website that purports to offer users “rewards” in exchange for completing a free survey. The <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names resolve to advertising pages that include links to competing third-party 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. 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.”).
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, Google Inc., claims rights in the GOOGLE, GMAIL, and YOUTUBE marks based on its registrations of the marks with national trademark authorities. Complainant claims rights in the GOOGLE mark based on its registration with the USPTO (e.g. Reg. No. 2,884,502 registered September 14, 2004); claims rights in the GMAIL mark based on its registration with the UKIPO (e.g. Reg. No. 2,493,281 registered April 14, 2004); and claims rights in the YOUTUBE mark based on its registration with the IPA (e.g. Reg. No. 897,049 registered March 1, 2006). Previous panels have concurred that registration of a mark with a national trademark authority is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel holds that Complainant has established rights in the GOOGLE, GMAIL, and YOUTUBE marks under Policy ¶ 4(a)(i). The fact that Complainant holds registrations in a country other than that in which Respondent resides is irrelevant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant further claims that each of the disputed domain names is confusingly similar to either its GOOGLE, GMAIL, or YOUTUBE marks under Policy ¶ 4(a)(i). Each of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, and <wwwgoogld.com> domain names contain a simple misspelling of the GOOGLE mark with the addition of a generic top-level domain (“gTLD”). The <wwwgoogld.com> domain name also contains the prefix “www”. Previous panels have determined that neither misspellings nor the addition of a gTLD or the prefix “www” are sufficient to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel concludes that the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, and <wwwgoogld.com> domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant urges that the <ggmaill.com> and <gmaill.net> domain names are confusingly similar to Complainant’s GMAIL mark for the purposes of Policy ¶ 4(a)(i). Both domain names contain a misspelling of Complainant’s GMAIL mark while adding a gTLD. The Panel finds that these changes do not defeat a claim of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Finally, Complainant urges that the <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names are confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i). Each domain name includes a misspelling of Complainant’s YOUTUBE mark, while adding a gTLD. Again, the Panel finds that these changes do not defeat a claim of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
UDRP precedent indicates that Complainant is to first present a prima facie case in order to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In this case, Complainant has satisfied its burden, while Respondent has not. A number of previous panels have viewed this as evidence that Respondent has no legitimate rights or interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Complainant also asserts that it has never licensed or authorized Respondent’s use of the names. The Panel finds no similarity between “Henry Nowak,” who is listed as the domain name registrant under the relevant WHOIS information, and the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names. Lastly, because no Response has been submitted in this case, there is no evidence in the record to suggest that Respondent is commonly known by any of the names. In light of these findings, the Panel concludes that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant also alleges that Respondent’s use of the disputed domain names does not coincide with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names resolve to advertising pages that include links to competing third-party services. Past panels have agreed that resolution of a disputed domain name to a site featuring competing hyperlinks does not demonstrate rights or legitimate interests in a disputed domain name. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent’s use of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The <googler.org> domain name resolves to a blank page consisting of only the domain name in text. Respondent’s failure to make an active use of the website housed at the disputed domain name evidences a lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel concludes that Respondent’s use of the <googler.org> domain name does not constitute 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).
The <youtubew.com> domain name resolves to a third-party website that purports to offer users “rewards” in exchange for completing a free survey. Users who complete the survey must surrender personal information and sign up for recurring text messaging plans and other charges in order to qualify for such rewards. The Panel finds this type of practice to constitute a phishing scheme, negating any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Victoria's Secret Stores Brand Management, Inc. v. Domain Tech Enterprises c/o Domain Administrator, FA1388153 (Nat. Arb. Forum June 22, 2011) (finding that a resolving website offering a $500 Victoria’s Secret gift in exchange for the provision of Internet users’ personal information, so that when Internet users enter their mobile telephone numbers, a $9.99/month charge is added to their cell phone bills constitutes a phishing scheme that does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain under Policy ¶ 4(c)(iii)); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”).
Because each of the disputed domain names differs from Complainant’s marks only slightly, Complainant contends that Respondent also lacks rights or legitimate interests on Policy ¶ 4(a)(ii) typosquatting grounds. The Panel finds sufficient similarity between each disputed domain name and Complainant’s GOOGLE, GMAIL, and YOUTUBE marks to apply the Policy ¶ 4(a)(ii) typosquatting doctrine. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting).The Panel holds that Complainant lacks legitimate rights or interests in the disputed domain names on typosquatting grounds as well. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s pattern of registering confusingly similar domain names provides evidence that Respondent’s registrations in the immediate case are also in bad faith under Policy ¶ 4(b)(ii). Complainant presents a list of over one hundred confusingly similar domain names registered by Complainant. The Panel does not find these registrations to constitute bad faith under Policy ¶ 4(b)(ii), however, because these registrations have not been the subject of UDRP proceedings. In any event, the Panel does find Respondent’s registration of seventeen different confusingly similar domain names in the immediate case to constitute bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Respondent’s use of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names to resolve to advertising pages that include links to competing third-party services evidences bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Internet users intending to visit Complainant’s site who instead mistakenly visit one of Respondent’s confusingly similar domain names will be exposed to services that directly compete with those offered by Complainant. Previous panels have determined that resolution of a disputed domain name to a page featuring competing hyperlinks constitutes bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel holds that Respondent’s use of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent’s use of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names to resolve to advertising pages that include links to competing third-party services also demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel infers that Respondent collects click-through fees each time one of the competing hyperlinks is accessed. Respondent’s attempt to create confusion as to Complainant’s affiliation with the disputed domain names is an attempt to draw greater traffic to the websites housed at the disputed domain names, creating greater exposure to the competing hyperlinks featured there. Greater exposure will inevitably lead to a higher click-through rate, creating greater revenue for Respondent. Previous panels have found that the realization of a commercial gain through the creation of confusion as to Complainant’s affiliation with a website housed at a disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel opines that Respondent’s use of the <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.net>, and <youtuibe.net> domain names demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant further alleges that Respondent’s registration and use of the <youtubew.com> domain name represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel infers that Respondent seeks to realize some sort of financial gain through the operation of its phishing scheme. It attempts to draw Internet users to its phishing scheme through the use of a confusingly similar domain name. In this way, Respondent hopes to realize a commercial gain from the confusion it creates. The Panel finds that registration and use of the <youtubew.com> domain name for this purpose represents bad faith registration and use under Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Respondent’s registration and use of the <youtubew.com> domain name to operate a phishing scheme further represents bad faith under Policy ¶ 4(a)(iii). Even apart from Complainant’s attraction for commercial gain argument, past panels have found bad faith registration and use based on the mere presence of a phishing operation. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Respondent’s actions in the immediate case undoubtedly constitute phishing. Consistent with past UDRP precedent, the Panel also finds bad faith registration and use under Policy ¶ 4(a)(iii) on this basis alone. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant contends that Respondent’s resolution of the <googler.org> domain name to a blank page consisting of only the domain name in text serves as evidence of bad faith under Policy ¶ 4(a)(iii). Previous panels have held that failure to make an active use of a domain name equates to a bad faith use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds Respondent’s use of the <googler.org> domain name to be in bad faith under Policy ¶ 4(a)(iii).
Complainant also believes that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the GOOGLE, GMAIL, and YOUTUBE marks. While constructive notice has not been generally been enough to support a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). The Panel finds that Respondent can be fairly charged with having actual notice of Complainant's marks and, therefore, that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s practice of typosquatting demonstrates bad faith registration and use of the disputed domain names. The Panel has found that Respondent’s registration and use domain names containing slight misspellings of Complainant’s marks constitutes typosquatting, and holds that this too demonstrates bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds Policy ¶ 4(a)(iii) to be 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 <golgle.biz>, <golgle.info>, <goodgle.net>, <googl.info>, <googler.org>, <googlr.biz>, <googo.net>, <gooler.net>, <gooogle.biz>, <wwwgoogld.com>, <ggmaill.com>, <gmaill.net>, <youtbue.net>, <youtrube.net>, <youtubew.com>, <youtubew.net>, and <youtuibe.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 16, 2012
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