DECISION

Google Inc. v. Amcore & Company For Sale Domains $250 or Best Offer.

Claim Number:  FA0405000267534

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Rose A. Hagan, 1600 Amphitheatre Parkway, Mountain View, CA 94043.  Respondent is Amcore & Company For Sale Domains $250 or Best Offer. (“Respondent”), 166 Sohrevardi Shomali Record building, Second Floor, Tehren, Iran Postal District.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com>, registered with Bulkregister, LLC.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically May 3, 2004; the Forum received a hard copy of the Complaint May 3, 2004.

On May 4, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the domain names <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> are registered with Bulkregister, LLC. and that Respondent is the current registrant of the names. Bulkregister, LLC., verified that Respondent is bound by the Bulkregister, LLC., registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 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@googleme.com, postmaster@googlepages.com, postmaster@googler.net, postamaster@googlers.com, postmaster@wwwgoogle.net, and postmaster@goooglee.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 June 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com>, are confusingly similar to Complainant’s GOOGLE mark.

2. Respondent has no rights to or legitimate interests in the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names.

3. Respondent registered and used the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names in bad faith.

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

FINDINGS

Complainant, Google, Inc., is a search engine created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin.  Complainant’s primary website is located at <google.com>.  The website has an index of some 3 billion web pages and responds to more than 200 million search queries per day. 

Complainant owns the domain name register for <google.com>, registered September 15, 1997 that has identified Complainant’s website for the past six years.

Complainant is the owner of United States Trademark Registration No. 2806075 for the mark GOOGLE covering search and communication services in International Classes 38 and 42.  Complainant is also the owner of US trademark registration applications, including Application Serial No. 75-554461, filed September 16, 1998, covering computer hardware and software in International Class 9. 

Respondent registered the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names March 13, 2001, July 19, 2000, February 11, 2002, November 1, 2000, February 11, 2002, and November 24, 2000, respectively.

Respondent uses the domain names, with the exception of <googlee.com>, which returns a DNS error page, in connection with a website that hosts a different search engine providing links to a variety of websites and features a variety of advertisements. 

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights in the GOOGLE mark through its registration applications with the USPTO and by continuous use of its mark in commerce for the last six years.  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 British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”)

The domain names registered by Respondent are confusingly similar to Complainant’s GOOGLE mark because the domain names incorporate Complainant’s mark in its entirety and deviate from it only by the addition of generic or descriptive terms such as “pages” and “me.”  The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  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 Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Moreover, the domain names registered by Respondent are confusingly similar to Complainant’s GOOGLE mark because the domain names incorporate Complainant’s mark in its entirety and deviate from it only by the addition of the letters “r,” “www,” or by inserting an extra “o” and “e.”  The addition of a letter to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

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

Rights to or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Respondent is using the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names to redirect Internet users to a website that offers search engine services identical to those offered by Complainant.  Respondent’s use of a domain name confusingly similar to Complainant’s GOOGLE mark to redirect Internet users interested in Complainant’s services to a website that offers a similar search engine is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

Moreover, Respondent has offered no evidence and no proof in the record suggests that Respondent is commonly known by the disputed names. Respondent’s WHOIS domain name registration information does not even suggest Respondent is commonly known by the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain names to advertise its own search engine using domain names that are identical to and confusingly similar to Complainant’s protected mark.  Respondent’s domain names divert Internet users wishing to search under Complainant’s well-known mark to Respondent’s website through the use of several domain names that are confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names, evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly attempts to compete with Complainant.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <googleme.com>, <googlepages.com>, <googler.net>, <googlers.com>, <wwwgoogle.net> and <goooglee.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated:  June 21, 2004

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