Google Inc. v. Luis David Garcia Luis
Claim Number: FA1212001475078
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Luis David Garcia Luis (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlecasinosonline.com>, registered with Register.it SPA..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 11, 2012.
On December 12, 2012, Register.it SPA confirmed by e-mail to the National Arbitration Forum that the <googlecasinosonline.com> domain name is registered with Register.it SPA and that Respondent is the current registrant of the name. Register.it SPA has verified that Respondent is bound by the Register.it SPA 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@googlecasinosonline.com. Also on December 13, 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 January 8, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant, Google is one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant’s primary website is located at <google.com>.
2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004). Complainant also owns and shows evidence of trademark registrations with Portugal’s National Industrial Property Office (“NIPO”) for the GOOGLE mark (e.g., Reg. No. 162,892, registered April 21, 2005). Complainant also owns numerous trademark registrations with various trademark agencies throughout the world.
3. Respondent’s <googlecasinosonline.com> domain name is nearly identical or confusingly similar to Complainant’s mark as it merely adds the descriptive and non-distinctive terms “casinos” and “online” after Complainant’s GOOGLE mark.
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known as the domain name or any name containing Complainant’s GOOGLE mark as Respondent’s WHOIS information in connection with the domain name makes no mention of the domain name or the mark as Respondent’s name or nickname. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way.
ii. Respondent’s disputed domain name currently resolves to a website that has been monetized with click-through advertisements.
5. Respondent has registered and is using the disputed domain name in bad faith.
i. Respondent offered to sell the disputed domain name to Complainant for €5,000, a figure well above Respondent’s out-of-pocket costs to register the domain name.
ii. Respondent’s disputed domain name is being used to generate revenue using pay-per-click advertising.
iii. It is extremely unlikely that Respondent created the disputed domain name independently based on the fame and unique qualities of Complainant’s GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Google Inc., is a United States company that is one of the largest, most highly recognized, and widely used Internet search services in the world.
2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004). Complainant also owns and shows evidence of trademark registrations with Portugal’s National Industrial Property Office (“NIPO”) for the GOOGLE mark (e.g., Reg. No. 162,892, registered April 21, 2005). Complainant also owns numerous trademark registrations with various trademark agencies throughout the world.
3. Respondent registered the <googlecasinosonline.com> domain name on May 31, 2012.
4. The domain name resolves to a website that has been monetized with click-through advertisements including advertisements titled “THE BIGGEST INTERNET BROWSER FOR ONLINE CASINOS,” “PLAY SLOT MACHINE,” “BETTING BASEBALL,” “BETTING ON BOXING,” and other advertisements.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it is one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant argues that its primary website is located at <google.com>. Complainant contends and shows that it owns trademark registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004). See Complainant’s Exhibit 8a. Complainant also argues and shows that it owns trademark registrations with Portugal’s NIPO for the GOOGLE mark (e.g., Reg. No. 162,892, registered April 21, 2005). See Complainant’s Exhibit 8b. Complainant also argues that it owns numerous trademark registrations with various trademark agencies throughout the world. See Complainant’s Exhibit 8b. The Panel notes that Respondent appears to reside in Portugal. The Panel finds that Complainant’s registration of the GOOGLE mark with the USPTO and Portugal’s NIPO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent’s <googlecasinosonline.com> domain name is nearly identical or confusingly similar to Complainant’s GOOGLE mark as it merely adds the descriptive and non-distinctive terms “casinos” and “online” after Complainant’s GOOGLE mark. The Panel notes that the words “casinos” and “online” are generic words. The Panel finds that the addition of generic words does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel notes that Respondent also adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that the addition of a gTLD does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel concludes that Respondent’s <googlecasinosonline.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GOOGLE trademark and to use it in its domain name, adding only the generic words “casinos” and “online”, which emphasis the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the domain name so that it resolves to a website that has been monetized with click-through advertisements including advertisements titled “THE BIGGEST INTERNET BROWSER FOR ONLINE CASINOS,” “PLAY SLOT MACHINE,” “BETTING BASEBALL,” “BETTING ON BOXING,” and other advertisements;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent is not commonly known as the domain name or any name containing Complainant’s GOOGLE mark as Respondent’s WHOIS information in connection with the domain name makes no mention of the domain name or the mark as Respondent’s name or nickname. The Panel notes that the WHOIS information identifies “Luis David Garcia Luis” as the registrant of the disputed domain name. See Complainant’s Exhibit 4. Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. The Panel notes that Respondent has not provided any evidence showing that it is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant asserts that Respondent’s disputed domain name currently resolves to a website that has been monetized with click-through advertisements and provides evidence to this effect. The Panel notes that Respondent’s disputed domain name connects to a website that features advertisements titled “THE BIGGEST INTERNET BROWSER FOR ONLINE CASINOS,” “PLAY SLOT MACHINE,” “BETTING BASEBALL,” “BETTING ON BOXING,” and other advertisements. See Complainant’s Exhibit 10. The Panel determines that Respondent’s use of the disputed domain name to provide click-through advertisements is 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that it contacted Respondent and offered to purchase the disputed domain name for $100.00, and that Respondent initially accepted this offer but later rejected it. Complainant contends that Respondent then offered to sell the disputed domain name to Complainant for €5,000, a figure that Complainant claims is well above Respondent’s out-of-pocket costs to register the domain name. See Complainant’s Exhibit 9. The Panel finds that Respondent’s offer to sell the domain name to Complainant evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Secondly, Complainant argues that Respondent’s disputed domain name is being used to generate revenue using pay-per-click advertising. The Panel notes that Respondent’s disputed domain name resolves to a website featuring advertisements such as “THE BIGGEST INTERNET BROWSER FOR ONLINE CASINOS,” “PLAY SLOT MACHINE,” “BETTING BASEBALL,” “BETTING ON BOXING,” and other advertisements. See Complainant’s Exhibit 10. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click-advertisements evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Thirdly, Complainant asserts that, based on the fame and unique qualities of Complainant’s GOOGLE mark, it is extremely unlikely that Respondent created the disputed domain name independently. The Panel finds that, due to the fame and unique qualities of Complainant's GOOGLE mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GOOGLE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlecasinosonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 9, 2013
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