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DECISION

Google Inc. v. Raffaele Bassano

Claim Number: FA0401000232958

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Rose A. Hagan, 2400 Bayshore Parkway, Mountain View, CA, USA 94043. Respondent is Raffaele Bassano  (“Respondent”), Via Garibaldi 8, Pornovo San Giovanni, BG, Italy 24040.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <googlesex.info>, registered with TuCows, Inc. d/b/a OpenSRS (hereinafter “OpenSRS”).

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 28, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On January 30, 2004, OpenSRS confirmed by e-mail to the Forum that the domain name <googlesex.info> is registered with OpenSRS and that the Respondent is the current registrant of the name. OpenSRS has verified that Respondent is bound by the OpenSRS 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 February 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 1, 2004 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.info by e-mail.

A timely Response was received on February 11, 2004.  However, the Response was neither properly served on Complainant nor submitted in hard copy, and is thus not in compliance with UDRP Rule 5(b)(vii).  Nor did the Response include the certification statement required by UDRP Rule 5(b)(viii). For these reasons, the Panel may choose not to consider the Response in reaching its decision. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that Respondent’s failure to submit a hard copy of the Response and its failure to include any evidence to support a finding in its favor placed Respondent in a de facto default posture, permitting the Panel to draw all appropriate inferences stated in the Complaint); see also Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to the facts alleged in Respondent’s deficient submission, partly because it “did not contain any certification that the information contained in the e-mail was, ‘to the best of Respondent’s knowledge complete and accurate’” in accordance with UDRP Rule 5(b)(viii)). However, the Panel in its discretion elects to consider Respondent’s deficient Response. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that formal deficiencies in the Response should be considered in context of whether or not Respondent is a native English speaker in holding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

On February 23, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. The domain name <googlesex.info>, which fully incorporates Complainant’s famous trademark and trade name GOOGLE, is confusingly similar to Complainant’s GOOGLE trademark and trade name.

2. Respondent does not have any rights or a legitimate interest in the domain name because the domain name trades on the goodwill of Complainant’s GOOGLE mark and name, and Respondent’s use of that mark and name is unauthorized.  Respondent is not and has never been a licensee of Complainant.  Respondent is not and has never been otherwise authorized by Complainant to use the GOOGLE mark.

3. Respondent’s registration and use of the domain name meets the bad faith requirement described in Paragraph 4(a) of the UDRP.

B. Respondent

Respondent contends that the domain name is “free dominion” and contends that he has some relationship with Google, but he does not elaborate. 

FINDINGS

 

1.            Google is one of the largest and most recognized providers of Internet search services in the world and has used the GOOGLE mark in conjunction with those services since 1997.  Google’s primary website is located at <google.com>. 

            2.            Currently, the GOOGLE search engine has an index of over 3 billion web pages, and responds to more than 200 million search queries per day.  The GOOGLE search engine offers Internet users an easy-to-use interface, advanced search technology, and a comprehensive array of search tools.  In addition, the GOOGLE search engine allows Internet users to search for and find content in many different languages; access stock quotes, maps, and news headlines; access telephone book listings for every city in the United States; and retrieve more than 18 million .PDF documents.

3.            Google’s website is one of the most popular destinations on the Internet.  Google has consistently been honored for its technology and its services, and has received numerous industry awards.

4.            The GOOGLE mark identifies Google’s unique search services, search engine technology, and associated services.  Having been widely promoted among members of the general consuming public since 1997, Google’s GOOGLE mark and name symbolize the tremendous goodwill associated with Google and are property rights of incalculable value.  Furthermore, due to widespread and substantial international use, Google’s GOOGLE mark and name have become famous.

5.            Google is the owner of numerous United States trademark applications for the mark GOOGLE.  Google is the owner of trademark registrations for the GOOGLE mark worldwide.

            6.            Google owns the domain name <google.com>, which was registered on September 15, 1997 and which has been used to identify Google’s website since on or about that date. 

7.            Google’s trademark rights in its GOOGLE mark, based on its trademark filings in the United States and elsewhere throughout the world, and on its common law rights under United States law acquired through the extensive use of the GOOGLE mark, trade name, and domain name, long predate Respondent’s registration of the domain name <googlesex.info> on June 28, 2002.

            8.            On June 28, 2002, Respondent registered, without Complainant’s permission, the domain name <googlesex.info>. 

            9.            Respondent uses the domain name <googlesex.info> for a web directory of pornographic content.  This site prominently displays the word GOOGLESEX in large letters at the top of each page of the site.  It also includes pornographic images, and causes pop-ups to appear on the user’s screen asking if the user wishes to install software.

 

            10.            On December 1, 2003, Complainant sent a cease and desist letter via email to the Respondent.  On December 4, 2003, Respondent responded (in Italian) that he was refusing to transfer the domain name unless Complainant paid Respondent 5,000 Euro.  

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 established rights in the GOOGLE mark through widespread and global use of the mark in commerce, as well as through registrations of the mark worldwide. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); 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).

The <googlesex.info> domain name is confusingly similar to Complainant’s GOOGLE mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also 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 Complainant combined with a generic word or term).  Respondent’s registration and use of the domain name is designed to cause confusion among internet users as to Complaint’s affiliation, or association with Respondent’s pornographic website.  See Google Inc v. Mikel M.Freije, FA 102609 (Nat. Arb. Forum  Jan. 11, 2002)  (finding the domain name <googlesex.com> confusingly similar to Complainant’s GOOGLE mark). 

Accordingly, the Panel finds that the <googlesex.info> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s use of the disputed domain name to host an adult-oriented directory that displays adult-oriented images is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Respondent is not commonly known by the disputed domain name, and thus does not have rights or legitimate interest in the domain name. See Victoria’s Secret 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); see also 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).

Respondent’s unsolicited offer to sell its domain name registration to Complainant for 5,000 Euro is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <googlesex.info> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its pornographic website by creating a likelihood of confusion with Complainant’s famous GOOGLE mark as to the source or endorsement of Respondent’s website and the goods or services offered at that website.  This is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also 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 Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site).

Respondent’s unsolicited offer to sell its domain name registration to Complainant for 5,000 Euro is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).

Moreover, Respondent’s registration of the <googlesex.info> domain name indicates Respondent was on notice of Complainant’s rights in the GOOGLE mark.  Respondent’s registration and use of the disputed domain name despite actual or constructive knowledge of Complainant’s rights demonstrate Respondent’s bad faith registration and use 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 Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Google Inc. v. Jon G., FA106084 (Nat. Arb. Forum, April 26, 2002) (opportunistic bad faith found where the respondent registered domain name with knowledge of Complainant's GOOGLE mark and used the website to trade on Complainant’s fame and goodwill); see also Google v. Abercrombie 1, FA101579 ( Nat. Arb. Forum December 10, 2001) (“because of the famous and distinctive nature of Complainant’s GOOGLE mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name]”).

The Panel thus finds that Respondent registered and used the <googlesex.info> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <googlesex.info> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 8, 2004

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