Google Inc. v. Ara Avedian
Claim Number: FA1206001449778
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Ara Avedian (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coogle.com>, registered with 1 & 1 Internet AG.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 21, 2012.
On June 22, 2012, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <coogle.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2012 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@coogle.com. Also on June 22, 2012, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the GOOGLE mark;
b) Complainant is the owner of the registrations through IP Australia (“IPA”) for the GOOGLE mark (e.g., Reg. No. 788,234 March 12, 1999);
c) The <coogle.com> domain name is confusingly similar to the GOOGLE mark;
d) Respondent is not commonly known by the <coogle.com> domain name;
e) The <coogle.com> domain name resolves to a website displaying click-through links;
f) Respondent’s willingness to sell the <coogle.com> domain name is evidence of bad faith;
g) The <coogle.com> domain name is disruptive to Complainant’s business;
h) The <coogle.com> domain name is meant to cause confusion as to the source of the <coogle.com> domain name so that Respondent may take commercial advantage of Internet users’ resulting mistakes;
i) Respondent has engaged in typosquatting;
j) Respondent registered the <coogle.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the GOOGLE mark.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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.”).
Complainant argues that it has rights in the GOOGLE mark. Complainant states that the GOOGLE mark is used in connection with one of the world’s largest collections of searchable documents accessed online. Complainant provides the Panel with evidence of its registrations for the GOOGLE mark (e.g., Reg. No. 788,234 March 12, 1999) through IPA. Panels have found that the rights acquired through trademark registration satisfy Policy ¶ 4(a)(i) regardless of the location of the parties. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends that Respondent’s <coogle.com> domain name is confusingly similar to the GOOGLE mark. The Panel finds that Respondent’s misspelling of the GOOGLE mark by one letter in the disputed domain name fails to differentiate the <coogle.com> domain name from the GOOGLE mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not make the disputed domain name distinctive from Complainant’s mark. See 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). Therefore, the Panel finds that Respondent’s <coogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <coogle.com> domain name. Complainant argues that the WHOIS record makes no mention of the <coogle.com> domain name or the GOOGLE mark as Respondent’s name or nickname. The Panel notes that the WHOIS record lists “Ara Avedian” as the domain name registrant. Additionally, Complainant states that it has not licensed or otherwise authorized Respondent to the GOOGLE mark. Therefore, the Panel finds that Respondent is not commonly known by the <coogle.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent is not using the <coogle.com> domain name for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the <coogle.com> domain name resolves to a website which displays monetized links under headings such as “Finance” and “Shopping.” Panels have found that the display of commercially gainful links on a disputed domain name is not a use that gives the respondent rights or legitimate interests. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, the Panel finds that Respondent’s use of the <coogle.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant contends that Respondent’s lack of rights and legitimate interests is further demonstrated by the fact that Respondent typosquatted Complainant’s mark in the disputed domain name. Complainant asserts that Respondent simply changed the letter “g” of Complainant’s mark to the letter “c” in the disputed domain name. Panels have found that typosquatting, making insignificant changes to so as to increase the likelihood of Internet users inadvertently reaching the disputed domain name, is evidence of a lack of rights and legitimate interests. 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).”). Therefore the Panel finds that Respondent does not have rights or legitimate interests in the <coogle.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <coogle.com> domain name in bad faith. Complainant argues that the website the <coogle.com> domain name resolves to also includes the hyperlinked text, “The domain <coogle.com> may be for sale by its owner!” and that the link leads to a page, at <sedo.com>, where Internet users may make offers to buy the <coogle.com> domain name. Panels have found that general offers to sell a domain name evidence bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Therefore, the Panel finds that Respondent’s willingness to sell the <coogle.com> domain name makes clear that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent’s <coogle.com> domain name is disruptive to Complainant. Complainant argues that the <coogle.com> domain name resolves to a website which displays links to other search engine services. Panels have found that competitive links promoted on a disputed domain name is disruptive to the complainant’s business as it diverts consumers. See 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).”). Therefore, the Panel finds that Respondent’s registration and use of the <coogle.com> domain name are disruptive and thus evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent meant to cause confusion as to the source of the <coogle.com> domain name so that Respondent may take commercial advantage of Internet users’ resulting mistakes. Complainant argues that the <coogle.com> domain name resolves to a website that displays monetized links under headings such as “Lifestyle” and “Electronics.” Therefore, the Panel finds that, in bad faith, Respondent attempted to attract, for commercial gain, Internet users to the <coogle.com> domain name by creating a likelihood of confusion under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant next alleges that Respondent’s typosquatting demonstrates Respondent’s bad faith. Complainant argues that Respondent simply misspells Complainant’s mark by a single letter to create the disputed domain name. The Panel in Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), held that the practice of typosquatting has been recognized as evidencing bad faith registration and use. Therefore, the Panel finds that Respondent registered and is using the <coogle.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that, due to the fame of its trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the GOOGLE mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of such a close deviation of the GOOGLE mark in the domain name indicates that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel agrees with Complainant regarding Respondent's actual knowledge, thus concluding that Respondent registered the <coogle.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <coogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 23, 2012
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