DECISION

Google Technology, Inc. v. MediaMatch S.L.

Claim Number: FA0308000183907

PARTIES

Complainant is Google Technology, Inc., Mountain View, CA (“Complainant”) represented by Rose A. Hagan. Respondent is MediaMatch S.L., Girona, Spain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sexogoogle.com> registered with Gandi.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or 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 August 13, 2003; the Forum received a hard copy of the Complaint on August 20, 2003.

On August 21, 2003, Gandi confirmed by e-mail to the Forum that the domain name <sexogoogle.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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 August 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 2003 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@sexogoogle.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 September 22, 2003, 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

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

2. Respondent does not have any rights or legitimate interests in the <sexogoogle.com> domain name.

3. Respondent registered and used the <sexogoogle.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has produced evidence of trademark applications with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark, including Ser. No. 75/978,469 (filed on September 16, 1999) related to computer services. Complainant has also produced evidence of trademark registrations for the GOOGLE mark in various countries throughout the world.

Complainant has used the <google.com> domain name since September 15, 1997 to provide a search engine website.

Respondent registered the <sexogoogle.com> domain name on May 9, 2002. Respondent is using the disputed domain name as a search engine for pornographic material.

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 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 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.

Identical and/or Confusingly Similar

Complainant has established its rights in the GOOGLE mark through its pending trademark applications with the USPTO and its current trademark registrations in countries throughout the world. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); 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 Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant contends that the <sexogoogle.com> domain name is confusingly similar to the GOOGLE mark because the disputed domain name appropriates Complainant’s entire mark and adds the word “sexo” to the beginning of the mark. The Spanish word “sexo” translates to the English word “sex.” The addition of a generic term such as “sexo” does not sufficiently differentiate Respondent’s <sexogoogle.com> domain name from Complainant’s GOOGLE mark for purposes of Policy ¶ 4(a)(i). See Yahoo! Inc. and GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond in this proceeding. Thus, the Panel deems all reasonable allegations and inferences in the Complaint to be true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to respond to Complainant’s allegations, the Panel presumes Respondent has no rights to or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise); see also 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 is using the website at the <sexogoogle.com> domain name for a search engine for pornographic websites. Respondent’s use of a domain name confusingly similar to Complainant’s GOOGLE mark to provide pornographic search services does not demonstrate 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 Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Furthermore, Respondent has produced no evidence and there is no indication in the record that Respondent is commonly known by SEXOGOOGLE or <sexogoogle.com>. Therefore, Respondent has failed to manifest any rights to 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of the <sexogoogle.com> domain name, a domain name confusingly similar to Complainant’s mark, to connect Complainant with websites that contain pornographic material itself establishes bad faith registration and use of the domain name for purposes of Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with a pornographic web site can itself constitute bad faith”).

Moreover, the Panel presumes that Respondent is operating the website at the <sexogoogle.com> domain name for financial profit. The use of a domain name confusingly similar to Complainant’s GOOGLE mark to create a likelihood of confusion with Complainant’s mark for commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Sandra Franklin, Panelist

Dated:  October 3, 2003

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