WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google, Inc. v. Xtraplus Corp.
Case No. D2001-0125
1. The Parties
Complainant is Google, Inc., a California Corporation located in Mountain View, California, U.S.A.
Respondent is Xtraplus Corp. located in Newark, California, U.S.A.
2. The Domain Names and Registrar
The domain names at issue are ("Domain Names"):
The registrar is Network Solutions, Inc.
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was submitted on January 23, 2001, and amended on February 6, 2001. The Response was submitted on March 6, 2001. The parties submitted further materials on March 12 and 13, 2001.
On April 4, 2001, the WIPO Arbitration and Mediation Center appointed
Mark V.B. Partridge as Panelist.
Respondent has objected to Complainant's reply on the grounds that it is not authorized by the Rules. The Panel has discretion to consider supplemental submissions. In this case, because the lengthy initial submissions of the parties appear sufficient for addressing the issues, the supplemental submissions will not be considered.
4. Factual Background
The Google search engine was created in 1997 and has become one of the most highly recognized and widely used search engines on the Internet. The name GOOGLE is a play on the word "googol" meaning the number represented by 1 followed by 100 zeros. As used by Complainant, the name suggests the immense amount of information organized by the Google search engine. This explanation for the selection of the name has been well-documented in media articles dated as early as July 10, 1998.
The Google web site was launched on September 21, 1999, and has been the subject of extensive media recognition. In December 2000, Google has a user base of nearly 40,000,000 users. Google also offer promotional items bearing the GOOGLE mark such as hats, shirts and other collateral items at the web sites www.google.com and www.googlestore.com.
Complainant is the owner of pending applications for U.S. registration of the GOOGLE mark. It is also the owner of foreign trademark registrations for the GOOGLE mark in a number of countries, including Hong Kong, South Korea, Mexico, New Zealand and Switzerland. The earliest of these was issued September 16, 1998.
Complainant registered the domain name <google.com> on September 15, 1997.
Respondent is located 16 miles from Google's headquarters. Prior to registration of the Domain Names at issue, Respondent used the mark XTRAPLUS for an online retail site.
On October 27, 1999, shortly after Google was featured in various national publications such as USA Today and Computer Weekly, Respondent registered the domain names <googlegear.com> and <googlebuy.com>. The additional Domain Names were registered on February 10, 2000. Respondent has used the Domain Names for a site selling computer software, hardware and related accessories.
Respondent has publicly stated that it selected the name "google" to reflect the large number of products it sells at its site. Respondent claims that "google" is a generic term in common usage (i.e., Barney Google, google eyes, etc.) and is slang for "googol," the mathematical term representing 10 to the hundredth power.
On November 10, 1999, Respondent wrote to Google about its plan to operate an online retailer, stating:
I'm wondering how much it would cost, or if there was something else we could work out, for you to put a small link on your front page, something like: "Click here if you're looking for googlegear.com the one-stop shop for all of your online shipping needs.
On January 20, 2000, Respondent again contacted Complainant proposing a cross marketing relationship. Complainant has objected to Respondent registration and use of the Domain Names. Respondent replied that Google should avoid legal fees by purchasing the <googlegear.com> domain name. Respondent further stated that it has spent a great deal of money and would want to be adequately compensated.
Respondent's use of the Domain Names has caused many documented instances of actual confusion with the GOOGLE mark. In several cases, the confusion involves complaints directed to Complainant about the nature and quality of Respondent's services. Respondent has submitted additional evidence showing that many of its customers are not confused and give high ratings to the quality of its services.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith as a deliberate attempt to trade on Complainant's mark.
Respondent denies those contentions and claims that its selection of the Domain Names was "an independent decision to upgrade and improve its operations, NOT an attempt to achieve any form of benefit from using a copy of another's mark." Respondent claims that "google" is a term that exists in English and is not uniquely associated with Complainant. Respondent also claims that it has a legitimate interest in the Domain Names because it used them in connection with a bona fide retail service prior to any notice of this dispute.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Complainant has established rights in the GOOGLE mark based on adoption and use. The mark is an arbitrary or suggestive term for a search engine on the Internet. In either case, the term is entitled to protection upon adoption and use in commerce. The record indicates that the mark was in use by Complainant prior to Respondent's registration and use of the Domain Names. Therefore, Complainant has established rights in the mark.
The Domain Names are not identical to Complainant's mark. However, the Domain Names are all formed by adding a generic term to Complainant's mark: "gear" and "buy". Both terms would be apt selections in the context of marketing promotional products for Complainant's site. Prior decisions have found similar domain names to be confusingly similar.
The decision in Chanel, Inc. v. Estco Technology Group, ICANN D2000-0413 (WIPO 2000), stated that "the addition of the generic terms "store" and "fashion" are not sufficient to avoid confusion" between the mark CHANEL and the domain names <chanelstore.com> and <chanelfashion.com>.
Similarly, the decision in Chanel, Inc. v. Cologne Zone, ICANN D2000-1809 (WIPO 2000), considered the similarity between the mark CHANEL and the domain name <chanelperfumes.com>, and stated:
"CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, "perfumes" is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business."
Applying those principles here, GOOGLE is the salient feature of the terms at issue. The additional generic terms, "gear" and "buy", are apt choices for promotional goods relating to Complainant's site. Therefore, I find that Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
This conclusion is further supported by the evidence of actual confusion submitted by Complainant.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Complainant asserts that Respondent's activities are a deliberate infringement of its rights and therefore cannot be bona fide use.
Other decisions recognize that consideration of good faith is a key issue in determining whether use is bona fide under the policy. See World Wrestling Federation Entertainment, Inc. v. Rift, ICANN D2000-1499 (WIPO 2000)("not all use prior to notice of the dispute can qualify as bona fide use"). As explained in Ciccone v. Parisi, ICANN D2000- 0847 (WIPO 2000), intentionally infringing use should not be viewed as bona fide use:
"We . . . conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Here, the evidence indicates that Respondent's selection and use of the Domain Names was a deliberate infringement of Complainant's rights. A number of facts lead to this conclusion:
1. Respondent previously operated its web site under the domain name <xtraplus.com>.
2. Respondent, who is located within a few miles of Complainant, registered the Domain Name shortly after Complainant began its online operations and received substantial media attention.
3. Respondent's explanation for its selection seems disingenuous. The reasons mimic those given in the media about Respondent's selection of "google." Respondent's attempt to justify the selection of "google" is based on the notion that it is slang for the number called a "googol" but there is no evidence to support that claim. The more common association of "google" is with "google eyes" and the like, a usage unrelated to Respondent's given reasons for picking the name.
4. Although Respondent claims the name was picked because of the number, it did not initially make any effort to register "googol", but instead selected Complainant's misspelling.
5. Shortly after registering the Domain Name, Respondent contacted Complainant about the possibility of a joint commercial relationship based on the similarity of its name to Complainant's mark.
Based on the record presented, I find that Respondent's registration and use of the Domain Names was a reckless or deliberate infringement of Complainant's rights. I find no contrary evidence to support Respondent's claim that its selection and use was bona fide or in good faith. Accordingly, I find that Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith Registration and Use
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondents’] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondents] have engaged in a pattern of such conduct; or
(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondents’] web site or location."
As specifically noted in the Policy, the circumstances of bad faith are not limited to the above. See, e.g., Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO, February 18, 2000); 3636257 Canada v. eResolution.com, D2000-0110 (WIPO, April 10, 2000).
Respondent claims that it registered the Domain Names in good faith as a fair use of the term "google."
I do not find that claim to be credible. Respondent says it picked the name as slang for the number known as "googol", but it also argues that the name is a common generic term with no meaning (as in "Barney Google"). Respondent's reliance on the number explanation would support registration of <googolgear.com>, but in the absence of evidence showing common use of "google" as a reference for the number, it does not support registration of an imitation of Complainant's well-known mark. In short, Respondent does not appear to be legitimately using "google" as a reference to the number or in the sense the term is found in "Barney Google" or "google eyes." Instead, its change from <xtraplus.com> to <googlegear.com> seems calculated to trade on Complainant's mark.
Respondent obviously knew of Complainant's mark when it registered and began use of the Domain Names, since it contacted Complainant about a joint commercial venture. The pretext given for selecting the Domain Name is not plausible. For these reasons, I find that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to affiliation of its products or services with the GOOGLE web site.
Accordingly, I find that Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.
I conclude that the Domain Names are confusingly similar to a mark in which Complainant has prior rights, that the Registrant lacks any right or legitimate interest in the Domain Names, and that the Domain Names were registered and used in bad faith. Therefore, Complainant's request for transfer of the Domain Names <googlegear.com>, <googlegear.net>, <googlegear.org> and <googlebuy.com> is granted.
Mark V. B. Partridge
Dated: April 16, 2001