DECISION

Google Inc. v. E. D. Havik

Claim Number: FA0206000114604

PARTIES

Complainant is Google Inc., Mountain View, CA, USA (“Complainant”) represented by Julia Anne Matheson, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.  Respondent is E. D. Havik, Koog Aan De Zaan, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <google4mp3.com>, registered with Bulkregister.

PANEL

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 13, 2002; the Forum received a hard copy of the Complaint on June 14, 2002.

On June 18, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <google4mp3.com> is registered with Bulkregister and that Respondent is the current registrant of the name.  Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@google4mp3.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <Google4mp3.com> domain name is confusingly similar to Complainant's GOOGLE mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has done business under the GOOGLE mark since 1997.  Since that time Complainant has become 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>.  Complainant’s website is one of the most popular destinations on the Internet.  It was ranked number 5 of the Top 25 Web Properties by Nielsen NetRatings.

Complainant is the owner of two trademark applications with the United States Patent and Trademark Office (Application Serial Numbers 75-554461, 75-978469).  Complainant also has a trademark in Australia (Reg. No. 788234), Canada (Reg. No. TMA539576), Hong Kong (Reg. No. 168817/1999), Israel ( Reg. No.126,479), Japan (Reg. No. 4,478,963), Mexico (Reg. No. 622722), New Zealand (Reg. No. 306520), and the Russian Federation (Reg. No. 191,819).

Respondent registered the <google4mp3.com> domain name on March 1, 2002.  Respondent’s website is designed to mimic the distinctive features of Complainant’s <google.com> website.  Respondent uses Complainant’s GOOGLE mark in the same distinctive lettering and colors and states that “This page is an ‘Index Search’ utility that builds a query for Google TM.”  Furthermore, the search results at Respondent’s website are designed to look just like Complainant’s.

DISCUSSION

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 the 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) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established, through numerous trademark registrations and continuous use, that it has rights in the GOOGLE mark.  Respondent’s <google4mp3.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it incorporates Complainant’s entire mark and merely adds the “4mp3” suffix.  The addition of a string of numbers and letters to Complainant’s well-known mark does not overcome a claim of confusing similarity.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).  Furthermore, the addition of a generic top-level domain, such as “.com,” is insignificant when determining whether a domain name is confusingly similar.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

Respondent is using a confusingly similar domain name in order to attract Internet users interested in Complainant to Respondent’s website.  Furthermore, Respondent has created the website to mimic Complainant’s website thereby creating confusion as to the source, sponsorship and affiliation of the website at the <google4mp3.com> domain name.  This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent has not come forward with any evidence that it is commonly known as GOOGLE4MP3 or <google4mp3.com>, the only evidence before this Panel suggests that Respondent is commonly known as “E.D. Havik,” not GOOGLE4MP3.  As a result, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Based on the well-known nature of Complainant’s GOOGLE mark, the popularity of its website, and the care Respondent took to copy Complainant’s website’s distinctive features, it can be inferred that Respondent was aware of Complainant’s rights in the GOOGLE mark when it registered <google4mp3.com>.  Registration of a domain name incorporating another’s mark, despite actual or constructive notice is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent’s use of the disputed domain name, confusingly similar in all aspects to Complainant’s mark and very popular website located at <google.com>, is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv) because it infringes upon Complainant’s goodwill by creating a likelihood of confusion as to the source of the <google4mp3.com> domain name for Respondent’s commercial gain.  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <google4mp3.com> be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: July 18, 2002

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