Google Inc. v. Mahmut Karaca / Karaca Grup Ltd. Sti.
Claim Number: FA1607001682647
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States. Respondent is Mahmut Karaca / Karaca Grup Ltd. Sti. (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlereklamverme.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2016; the Forum received payment on July 6, 2016.
On July 9, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <googlereklamverme.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2016 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@googlereklamverme.com. Also on July 11, 2016, 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.
A timely Response was received and determined to be complete on July 13, 2016.
Complainant submitted an Additional Submission that was timely received by the Forum on July 18, 2016.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has used the GOOGLE mark since well before March 19, 2011, the date that Respondent registered the < googlereklamverme.com> domain name.
Complainant owns registrations for the GOOGLE mark in jurisdictions around the world that were issued ten years before the registration date of the at-issue domain name.
A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” Respondent has merely added to Complainant’s famous mark a generic top-level domain and the Turkish terms “reklam verme,” which translate to “advertising.” Because Complainant’s highly distinctive and famous GOOGLE mark forms the dominant portion of the domain name, it retains an overall commercial impression of being connected with Complainant. Lastly, top-level domain names are irrelevant regarding confusing similarity.
Given Complainant’s widespread and prominent use of the GOOGLE mark, the mark’s distinctiveness and fame, and Respondent’s intentional use of the mark in the at-issue domain name and on its website, there is no question that Respondent is familiar with, and is attempting to trade off of the goodwill embodied in, Complainant’s famous mark, and has deliberately chosen the at-issue domain name to create an association with Complainant.
Complainant has not authorized Respondent to register or use the domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant.
Although the term “Google Reklam Vermek” appears on the website resolving from the at-issue domain name, Respondent’s WHOIS information does not identify the registrant as Google, Google Reklam Vermek, and/or Google Reklam Verme and, upon information and belief, Respondent is not and was not commonly known as the domain name, or any name containing the GOOGLE mark, prior to registering it on March 19, 2011.
Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent is using the confusingly similar domain name for Respondent’s profit to resolve to a website that promotes the Internet advertising services of Respondent.
Given the fame of the GOOGLE mark, the extensive media coverage of Complainant and its mark, and Google’s worldwide trademark filings, it is inconceivable that Respondent created the at-issue domain name independently.
Even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith.
Respondent is clearly using the GOOGLE mark to attract Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the service promoted on that website. Respondent’s “efforts to increase profits for its business by creating consumer confusion and using…[Complainant’s mark] indicate bad faith registration and use according to Policy ¶ 4(b)(iv).”
Where a domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith.”
Given Respondent’s registration of a domain name that wholly incorporates the famous GOOGLE mark, it is impossible to conceive of any potential legitimate use of the domain name.
B. Respondent
Respondent contends as follows:
We, Internet Reklam Paketi, are a Google Partner, by the other words we are a company that Google certifies us for its advertisement program, Adwords. If the complainant tries to contact directly to us we are always in-cooperation with Google. Why they do not try this method we were surprised. We do not need so much description. Everything is transparent in this one page web site.
Googlereklamverme means “Give Google Ads” In the web site there is not any material that we behave like we are Google. You cannot see any Google logos. We have a service for giving “Google Ads” and we only try to express our service in this one page web site. There is not any abuse, deception.
C. Additional Submissions
Complainant in its Additional Submission contends as follows:
Respondent does not dispute any of the facts and arguments asserted by Complainant that establish a prima facie case warranting a transfer of the <googlereklamverme.com> domain name under the UDRP.
Respondent seeks to invoke a defense of “nominative fair use” – a “defense” that previous Panels have held is not applicable in a UDRP case where, as here, the disputed domain consists of nothing more than the Complainant’s mark and a descriptive or generic term. Moreover, the defense does not apply in this case because Respondent has failed to establish any of the three elements that are required for the defense to apply.
The Internet Reklam Paketi website, which show that the company promotes itself as providing a broad range of internet advertising services that extend well-beyond those related to Google’s advertising services, including, services related to, among others, Yandex search advertising, Yandex advertising, Facebook advertising, Instagram advertising, AOL advertising, Bing advertising, corporate SEO consulting, instant SEO tracking and social media tips.
Some of the factors required to demonstrate that Respondent’s domain name is a nominative fair use of Complainant’s trademark are absent. Thus, the nominative fair use defense does not apply.
Complainant has rights in the GOOGLE mark through its registration of such mark with the USPTO, as well as via its other worldwide trademark registrations.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website that acts as a single page advertisement for Respondent.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the GOOGLE trademark, as well as its other worldwide registrations, demonstrate Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademarks’ registrars. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).
Respondent forms the at-issue domain name by adding the terms “reklam verme” ‑which translates from Turkish to English as “give advertising”‑ to Complainant’s GOOGLE mark and then appending the generic top-level domain name “.com” to the resulting string. Adding descriptive words to Complainant’s trademark does nothing to distinguish the <googlereklamverme.com> domain name from the trademark, particularly when the added terms suggest Complainant’s advertising business. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Furthermore, suffixing the top-level domain name does nothing to distinguish the at-issue domain name from Complainant’s registered trademark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore the Panel concludes that the Respondent’s <googlereklamverme.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Mahmut Karaca / Karaca Grup Ltd. Sti.” as the domain name’s registrant and there is nothing in the record that otherwise indicates Respondent is commonly known as <googlereklamverme.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s use of the confusingly similar domain name to divert Internet users to its own website is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). To elaborate regarding fair use, using the confusingly similar domain name to address an advertising page for Respondent’s business is not a nominative fair use of Complainant’s trademark. As noted by Complainant in its papers, the application of the nominative fair use factors set out in New Kids on the Block v. News America, Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) to the at-issue domain name indicates that Respondent’s domain name does not qualify as a nominative fair use of Complainant’s mark. In particular, the New Kids third prong commands that to be a nominative fair use, the trademark user (here Respondent) must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder (here Complainant). The at-issue domain name’s second level translates to “Give Google Advertising” which would be something that Complainant would more likely advocate than would Respondent. The phrase, in the context of the <googlereklamverme.com> website, gives the impression that the domain name is somehow sponsored or endorsed by Complainant, when it is not. Therefore, Respondent’s domain name is not a nominative fair use of Complainant’s trademark.
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the confusingly similar <googlereklamekibi.com> domain name to attract Internet users to its terse website to benefit Respondent’s business. The trademark laden domain name and its accompanying website act as an advertisement for Respondent and create the false impression that Complainant is affiliated with, sponsors, or endorses Respondent. Using the domain name in this manner demonstrates bad faith registration and use of the <googlereklamverme.com> domain name under Policy ¶ 4(b)(iv). See Zoetis Inc. v. VistaPrint Tech. Ltd., FA1646149 (Forum Dec. 8, 2015) (finding bad faith registration and use from “[r]espondent’s use of the domain name to advertise its own business” which constituted “an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Additionally, Respondent registered the <googlereklamverme.com> domain name knowing that Complainant had trademark rights in the GOOGLE mark. Respondent’s prior knowledge is evident because of the high notoriety of Complainant’s trademark as well as Respondent’s admission in its Response that it was aware of Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <googlereklamverme.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlereklamverme.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 25, 2016
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