DECISION

Google Technology Inc. v. Internet Hispano, S.L.

Claim Number:  FA0307000176533

PARTIES

Complainant is Google Technology, Inc., Mountain View, CA (“Complainant”) represented by Rose A. Hagan, of Google Technology, Inc.  Respondent is Internet Hispano, S.L., Madrid, Spain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleporno.com>, registered with Arsys Internet, S.L. d/b/a Nicline.com.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 30, 2003; the Forum received a hard copy of the Complaint on August 4, 2003.

On July 31, 2003, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the Forum that the domain name <googleporno.com> is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com has verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.csom 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 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 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@googleporno.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 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <googleporno.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

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

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

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

FINDINGS

Since it was created in 1997, Complainant (“Google Technology, Inc”) has become one of the largest, most highly recognized and widely used Internet search services in the world.  Currently, Complainant’s search engine has an index of over 3 billion web pages and responds to more than 200 million search queries per day. 

Complainant is the holder of trademark applications for the GOOGLE mark with the United States Patent and Trademark Office including Serial No. 75,554,461 and Serial No. 75,978,469 filed on September 16, 1998 and September 16, 1999, respectively.  In addition, Complainant is the holder of numerous trademark registrations for the GOOGLE mark issued in various countries throughout the world.

Complainant first used the GOOGLE mark in 1997.  Complainant uses its GOOGLE mark in connection with its website hosted at the <google.com> domain name.  Complainant also uses its GOOGLE mark to identify its search services, search engine technology and associated services. 

Respondent registered, without Complainant’s permission, the <googleporno.com> domain name on August 17, 2001.  Respondent is using the disputed domain name as a search engine that provides pornographic content.  The website located at the <googleporno.com> domain name displays a logo that is similar to the logo displayed on Complainant’s website located at the <google.com> domain name.

After sending a cease and desist letter, Complainant received a reply from Respondent asking that Complainant ensure that the website located at the <chicasdetuciudad.com> domain name appear in the top results position of Complainant’s website for six months as compensation for transferring the <googleporno.com> domain name.  Complainant responded via email, advising that it could not guarantee to place a search result in the first few results of any search, and offered to reimburse the domain name registration fee, however, Complainant never received a Response from Respondent.

 

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 numerous trademark registrations for the GOOGLE mark in countries  throughout the world.  In addition, Complainant has pending trademark applications for the GOOGLE mark with the United States Patent and Trademark Office.  Therefore, the Panel finds that Complainant has demonstrated that it has rights in the GOOGLE mark for purposes of Policy ¶ 4(a)(i).  See 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); see also 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).

 The <googleporno.com> domain name is confusingly similar to Complainant’s GOOGLE mark.  Respondent merely adds the word “porno” and the top-level domain “.com” to Complainant’s entire mark.  Thus, the Panel finds that the disputed domain name is not sufficiently different from Complainant’s mark.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not submit a Response to the Panel.  Therefore, Respondent failed to submit any evidence showing that it has rights or legitimate interests in the <googleporno.com> domain name.  Furthermore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  Accordingly, due to Respondent’s failure to Respond, the Panel presumes that Respondent lacks rights or legitimate interests in the <googleporno.com> domain name 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 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii) because Respondent failed to provide any evidence that it is commonly known by the <googleporno.com> domain name.  See 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"); 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 is using the <googleporno.com> domain name as a search engine for pornographic content on the Internet and is displaying a logo that is similar to Complainant’s logo at the website associated with the <googleporno.com> domain name.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Microsoft Corp. v.  Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and is using the <googleporno.com> domain name to intentionally 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, sponsorship, affiliation and endorsement of Respondent’s website and/or the goods and services advertises on that website.  Thus, the Panel finds that Respondent registered and is using the disputed domain name in 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 Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).   

In addition, the offer by Respondent to transfer the <googleporno.com> domain name to Complainant in exchange for Complainant ensuring that the website located at the <chicasdetuciudad.com> domain name appear in the top results position of Complainant’s website for six months supports the Panel’s finding that Respondent acted in bad faith.  See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where Respondent offered to transfer the domain name in return for non monetary consideration (i.e., if Complainant met with Respondent, called two of his friends, and granted Respondent on interview); see also Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A. v. Waldron, D2001-0351 (WIPO June 18, 2001) (holding that Respondent’s request for “4 complementary tickets for the Seve Ballesteros Trophy for every year that the Seve Ballesteros trophy takes place” in exchange for the disputed domain name registration evidenced bad faith use and registration).

Furthermore, it can be inferred that Respondent registered the <googleporno.com> domain name with actual knowledge of Complainant’s famous and distinctive GOOGLE mark.  Thus, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) when it registered the disputed domain name with actual knowledge of Complainant’s rights in the GOOGLE mark.  See Google v. Abercrombie 1, FA101579    (Nat. Arb. Forum December 10, 2001) (“because of the famous and distinctive nature of Complainant’s GOOGLE mark, Respondent is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing [domain name]”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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).

Accordingly, 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 <googleporno.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  September 16, 2003

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