DECISION

Google Inc v. Mikel M Freije

Claim Number: FA0111000102609

PARTIES

Complainant is Google, Inc., Mountain View, CA (“Complainant”) represented by Julia A. Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  Respondent is Mikel M. Freije, Bilbao, SPAIN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <googlesex.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 27, 2001; the Forum received a hard copy of the Complaint on November 28, 2001.

On November 29, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <googlesex.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 November 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 19, 2001 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@googlesex.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 December 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <googlesex.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

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

Respondent  registered and used the domain name in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant has numerous trademark applications for the GOOGLE mark on the Principal Register of the United States Patent and Trademark Office.  Complainant has also registered the GOOGLE mark in various countries throughout the world.

Complainant registered the <google.com> domain name on September 15, 1997 with Network Solutions.  Since then, Complainant has become one of the largest, most highly recognized, and widely used Internet search services in the world.  Complainant responds to more than 100 million search queries a day.  Complainant has received numerous industry awards for its service.  Complainant also has more than 130 business partnerships with companies in more than 30 countries.

Respondent registered the domain name at issue on March 15, 2000, well after Complainant had began use and promotion of its mark. Respondent uses the domain name for a pornographic website.  In its response to Complainant’s cease and desist letter, Respondent claimed to own a Spanish Business with the name “googlesex”, but the Spanish Register reveals no such business exists.  Moreover, the license number Respondent offered Complainant as proof of its business is not valid.

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.

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;

(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 common law rights in the GOOGLE mark due to its extensive use of the mark on the Internet, in its business partnerships, and the volume of people to which it provides its services.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [“keppelbank.com”] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <googlesex.com> domain name is confusingly similar to Complainant ‘s GOOGLE mark because the addition of a generic term like “sex” does not sufficiently distinguish the domain name from the mark for purposes of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also General Electric Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding  <generalelectricsex.com> confusingly similar to Complainant’s “general electric” mark).

Respondent’s domain name is confusingly similar to Complainant’s mark because it is likely to cause confusion among Internet users as to Complainant’s affiliation, or association with Respondent’s pornographic website.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website). 

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

            Rights or Legitimate Interests

The Panel is permitted to make all inferences in favor of Complainant when Respondent has failed to respond.  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”).

           

Furthermore, Respondent’s failure to respond to this complaint indicates that Respondent does not have any rights or legitimate interests in the 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).

Respondent’s registration and use of the confusingly similar domain name to conduct a pornographic website for commercial gain is not a bona fide offering of goods or a legitimate noncommercial or fair use and therefore, does not afford Respondent rights or legitimate interests pursuant to Policy ¶ 4(c)(i) and (iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also National Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website).

Respondent’s claim that it is commonly known by “googlesex”, upon further investigation, proved to be false.  As a result, there is no evidence that Respondent is commonly known by the domain name, and therefore, it is presumed not to hold rights or legitimate interests in the 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 domain name when Respondent is not known by the mark).

Moreover, Respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s mark is so well known.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

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

            Registration and Use in Bad Faith

Respondent’s use of the confusingly similar domain name for commercial gain to create a likelihood of confusion with Respondent’s pornographic website is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site that may cause confusion as to the source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Moreover, Respondent’s registration and use of the domain name which disrupts Complainant’s business and tarnishes Complainant’s mark qualifies as bad faith use and registration under Policy ¶ 4(b)(iii).  See General Electric Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding bad faith in Respondent’s use of the domain name for commercial benefit by using Complainant’s mark to attract users to a pornographic site that could only tarnish the repute of Complainant’s mark).

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 <googlesex.com>  be hereby transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 11, 2002

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