Google Inc. (“Complainant”), just won the rights to the domain name GlassforSnap.com.
The one member panel of James A. Carmody, Esq., found the domain name GlassforSnap.com was confusing similar to Google’s trademark on the word “Glass”.
The domain holder did not submit a response and the domain name went to a page which clearly targeted users of Google and Snapchat.
All I can say is if you have a really good domain with the word “Glass” in it you better be careful what you do with the domain.
Obviously this domain holder was about as far from careful as you can get.
However it is still somewhat troubling that the panelist felt like he could just throw out two words of the three words in the domain and find it confusingly similar to Google’s Trademark in Glass and use as precedent the case involving the domain name duracellbatteries.com when the word Batteries was dropped by the panel to find the domain was similarly confusing to the trademark for DURACELL.
Of course in that case Duracell makes batteries that is their major product, quite different than SnapforGlass.com in my opinion.
Yet in law school they teach you that sometimes bad facts make bad law and I think that is the case here as the use of the domain name was so abusive that the panelist seemed to fell compelled to award the domain to Google.
Here is the relevant part of the opinion.
“”Complainant owns registrations for the GLASS mark under Policy ¶ 4(a)(i) with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,797,151 registered June 1, 2010) as well as in numerous countries internationally. Respondent’s domain name is confusingly similar to Complainant’s GLASS mark.
Respondent adds the terms “for” and “snap” as well as the generic top-level domain (“gTLD”) “.com.”
“Complainant owns registrations for the GLASS mark under Policy ¶ 4(a)(i) with the USPTO (Reg. No. 3,797,151 registered June 1, 2010) as well as in numerous countries internationally.
“Respondent’s domain name is confusingly similar to Complainant’s GLASS mark.”
“Respondent merely adds the terms “for” and “snap” as well as the gTLD “.com.”
The term “snap” is an abbreviation of “snapshot” as well as a term that refers to impermanent photos “snaps” taken with the SNAPCHAT application.
In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) the panel held that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s from the complainant’s DURACELL mark.
This Panel, agrees with case precedent and concludes that the addition of the terms “for” and “snap” as well as the gTLD “.com” to Respondent’s domain name do not distinguish it from Complainant’s GLASS mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the domain name. The WHOIS record for Respondent’s disputed domain name identifies the registrant as “Private Protection Co. LTD.”
Additionally, Complainant asserts that the record states that Respondent registered the disputed domain name on May 21, 2014, which was after Complainant had already acquired rights in the GLASS mark.
Respondent failed to submit a response in the proceeding and, therefore, has not contested Complainant’s contentions.
Respondent’s disputed domain name resolves to a website falsely informing users that they “won a Google Glass from Snapchat,” and offers participation in Complainant’s Glass Explorer program in exchange for downloading and installing one of Respondent’s apps.
When the Internet user clicks the “ok” button to “claim” the device, he is directed to a website that prominently features Complainant’s GLASS mark and an image of Complainant’s GLASS product, as well as requests for personally identifying information.
Prior panels have concluded that using a confusingly similar domain name to resolve to a website attempting to appear as complainant for financial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent registered and is using the glassforsnap.com domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name to induce unwary Internet users into downloading and installing Respondent’s apps is disruptive to Complainant’s business and has the potential to seriously damage Complainant’s reputation and goodwill.
The panel in Google Inc. v. SP, FA 395068 (Nat. Arb. Forum) found that respondent’s use of the disputed domain name to compete with complainant and disrupt its business by offering similar search engine services as a website that mimics complainant’s website is evidence of bad faith registration and use of the domain name.
The Panel agrees with the prior panel holding and finds that Complainant’s competing use to fraudulently offer alleged products of complainant’s to Internet users indicates bad faith.
Respondent uses Complainant’s marks and product to attract Internet users to its website by creating a substantial likelihood of confusion in order to deceive and commercially benefit from individuals who would mistakenly believe they are downloading and installing Complainant’s apps in order to comply with Respondent’s offer.
Prior panels have concluded that using a confusingly similar domain name to resolve to a website offering products and services that appear to be complainant’s and thereby a respondent commercially profits is evidence of bad faith use and registration.
Based on the content of Respondent’s resolving website, it is clear that Respondent had actual knowledge of Complainant’s GLASS mark when Respondent registered the disputed domain name. Respondent’s resolving website displays photographs of Complainant’s GLASS device and makes false offers of a free GLASS device and participation in the Glass explorer program. Complainant’s trademark registrations for the GLASS mark existed well before the registration of the disputed domain name. Respondent also had constructive knowledge of Complainant’s rights in the mark.
While panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
