Google Inc. v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1502001607396
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googletranslate.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2015; the Forum received payment on February 27, 2015. The Complaint was submitted in both English and Czech.
On March 6, 2015, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <googletranslate.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 March 13, 2015, the Forum served the Czech language Complaint and all Annexes, including a Czech language Written Notice of the Complaint, setting a deadline of April 2, 2015 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@googletranslate.com. Also on March 13, 2015, the Czech language 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Panel notes that the Registration Agreement is written in Czech thus making Czech the language of the proceedings. Pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Czech language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in GOOGLE and GOOGLE TRANSLATE. It alleges that the disputed domain name is confusingly similar to its trademark, GOOGLE.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark GOOGLE in connection with Internet search services;
2. The trademark is registered with the United States Patent and Trademark Office ("USPTO") under Reg. No. 2,806,075, registered Jan. 20, 2004;
3. The disputed domain name was registered on July 5, 2004;
4. The domain name redirects Internet users to third party websites as described later; and
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its registration for the trademark GOOGLE with the USPTO Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The domain name differs from the trademark by the addition of non-distinctive integers, namely, the gTLD and the purely descriptive word “translate”. Since the trademark – an invented term with no ordinary meaning - remains the dominant, distinctive part of the domain name Panel finds that the domain name is confusingly similar to the trademark (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. It follows that there is no need to consider Complainant’s assertion of trademark rights in GOOGLE TRANSLATE albeit that matter is discussed later under the bad faith analysis.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies the registrant of the disputed domain name identifies as a privacy service provider. Accordingly, there is no evidence that the actual owner of the domain name might be commonly known by that name.
There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use its trademarks and Complainant denies any such authorization.
The domain name has not been used in connection with a bona fide offering of goods or services. Complainant provides evidence that the resolving website redirects Internet users to third party websites some of which allegedly attempt to install malware on users’ computers or otherwise phish for sensitive personal information. Whilst such practices would not be a bona fide use of the domain name, it is only necessary for me to endorse Complainant’s submission that “the fact that Respondent uses the Domain Name to redirect Internet users
to third-party websites in itself fails to meet the Policy’s standard for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name”; see, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
In the absence of a Response, Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is contradictory (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000); Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)).
Given that the Complaint has been prepared on behalf of one of the largest commercial enterprises in the world, Panel is surprised to find that it is very casually reasoned. Complainant’s representatives are untroubled by the many UDRP cases which have considered laches as a possible reason to deny a complaint. The Complaint is silent on the decade long delay in the commencement of these administrative proceedings, a matter that calls for explanation. Moreover, that unexplained delay sits uncomfortably with the close timing in terms of the claimed first use of the expression GOOGLE TRANSLATE by Complainant and the date of registration of the domain name.
The domain name was registered in July 2004. The Complaint states that Complainant “has made extensive use of the GOOGLE and GOOGLE TRANSLATE marks in connection with its online translation services at translate.google.com since at least as early as 2003.” That claim is not supported by the evidence.
The evidence filed with the Complaint references the current popularity of the translation service provided under the GOOGLE TRANSLATE trademark, a fact essentially known to all and which does not assist Panel. Otherwise, the evidence carries an oblique reference to the genesis of the project in 2001 and to a full service capability in 2008. The list of trademark registrations owned by Complainant is limited to the trademark GOOGLE in plain and stylized forms. Registrations, should they exist, for GOOGLE TRANSLATE are not included. Panel is therefore unable to discover for itself from the evidence a possible first use in commerce date. In short, that date is not established on the evidence.
Accordingly, the conclusory statement that “[G]iven Complainant’s widespread and prominent use of the GOOGLE and GOOGLE TRANSLATE marks, as well as the marks’ distinctiveness and fame, there is no question that Respondent is familiar with, and is attempting to trade off of the goodwill embodied in Google’s famous marks, and has deliberately chosen the Domain Name to create an association with Google” is open to question, ten years later, with regard to the term GOOGLE TRANSLATE. The same applies to Complainant’s statement that “the evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name opportunistically and in bad faith.”
In summary, the evidence does not prove use of, still less a reputation in, the trademark GOOGLE TRANSLATE at the time of registration of the domain name.
The only respectable argument based on the evidence filed with the Complaint is that the trademark GOOGLE was clearly well known by that time. The unavoidable inference is that registration of the domain name was made in the knowledge of Complainant’s GOOGLE trademark and business.
That being so, it can be inferred further that the domain name was registered in bad faith since it combines the arbitrary, invented word, GOOGLE, with the purely descriptive word, “translate”. Even if GOOGLE TRANSLATE was not yet in public use in July 2004, or the launch of a translation service under the GOOGLE name was not yet known, it remains that such a service was a likely extension of Complainant’s business and so there is no good faith explanation as to why Respondent should have registered the disputed domain name.
Moreover, it follows from what has been explained earlier in this decision that use of the domain name has been in bad faith.
Panel finds registration and use in bad faith. Were it necessary to do so, Panel would also find that Respondent’s actions fall under subparagraph 4(b)(iv) of the Policy (see DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googletranslate.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 18, 2015
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