The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Mr. Racha Ravinder of Hyderabad, India.
The disputed domain name <googlenetbiz.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2009. On October 29, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 30, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 9, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2009.
The Center appointed Cherise Valles as the sole panelist in this matter on December 9, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The due date for the decision in this case was extended until January 8, 2010.
The Complainant, Google Inc., is widely recognised as one of the world's largest search engines. Its primary website was registered on September 15, 1997. Nielsen Netratings lists the Complainant's website “www.google.com” as the number one search engine in many developing and developed countries. The Complainant's Google Network, which includes all of their sites, reaches more than 80 per cent of Internet users in the world.
The Complainant's name and mark GOOGLE was coined and adopted in 1997 by the company's founders, Larry Page and Sergey Brin. The Complainant has obtained trademark registrations for its mark Google around the world. In India, the Complainant's mark GOOGLE has been registered under no. 845041 in class 09 since March 12, 1999.
The disputed domain name <googlenetbiz.com> was registered on July 2, 2008.
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the registered owner of the GOOGLE mark. A copy of the Complainant's trade mark registration certificate in India was provided in Annex 5 to the Complaint. A report showing the worldwide registration and application of the mark GOOGLE and copies of certain registration certificates were provided in Annex 6. The Complainant asserts that the disputed domain name, <googlenetbiz.com>, is confusingly similar to the Complainant's trademark in the light of the fact that it incorporates this trademark in its entirety. A domain name is “nearly identical or confusingly similar” to a complainant's mark when it “fully incorporates said mark”. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696. The addition of descriptive or non-distinctive terms does not diminish the likelihood of confusion. The addition of the terms “net” and “biz” only serve to highlight the word “Google” in the disputed domain name and are thus likely to mislead a web viewer into believing that the website with the disputed domain name was either owned or authorized by Google.
- The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant states that the GOOGLE mark is so well known around the world that there is no credible legitimate reason for the Respondent to have registered that domain name. The Complainant submits that the Respondent's purpose in registering the disputed domain name was to use the notoriety of the GOOGLE mark to generate web traffic and to confuse Internet users. The Complainant has the exclusive rights to the GOOGLE trademarks and has not licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. Furthermore, the Respondent's reference to the Complainant's Google and AdSense logo on its website would mislead Internet users. As the disputed domain name is registered for commercial purposes, it cannot, by definition, constitute a legitimate non-commercial use of the domain name. In addition, it does not constitute a “fair use” of the disputed domain name as it is being used to impersonate the Complainant and to appropriate the goodwill associated with the mark GOOGLE.
- The disputed domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on July 2, 2008, the Respondent undoubtedly had knowledge of the Complainant's famous GOOGLE mark. Given the widespread knowledge of the GOOGLE mark, it is extremely unlikely that the Respondent created the disputed domain name independently. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating confusion that it is an authorised advertising site for the Complainant's services. Furthermore, the fact that the Respondent has refused to comply with demands from Google regarding the transfer of the disputed domain name indicates that the registration of the disputed domain name was in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent has not replied to the Complainant's contentions in these proceedings. However, on January 5, 2010, the Respondent sent an email to the Case Manager at the Center offering to sell the disputed domain name for $50,000.
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent, having failed to respond in these proceedings is in default, and the Panel shall draw such appropriate inferences therefrom.
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark. It is well established that the Complainant has registered the mark Google in many jurisdictions around the world. The disputed domain name is confusingly similar to the Complainant's mark as it entirely incorporates the mark. The addition of the terms “net” and “biz” do not diminish that confusion as those terms are generic terms and only serve to highlight the term “Google”. As a result, Internet users may be misled into believing that the disputed domain name was an authorised Google website. A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another's mark. See Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131.
The burden of proof is on the Complainant to establish a prima facie case that the Respondent lacks rights or interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name, and the Panel draws adverse inferences from this failure.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's famous Google mark. The Complainant, who has registered the mark GOOGLE in many jurisdictions around the world, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the term “google” in the disputed domain name.
There is no credible or legitimate reason for the Respondent to have chosen to acquire the disputed domain name. The evidence suggests that the Respondent obtained the disputed domain name, only because it is similar to the Complainant's well known mark, and due to user confusion, will generate a lot of traffic by mistake.
The Respondent is not an authorised sales or service agent of the Complainant. See Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) ( WIPO Case No. D2006-1131). The Panel finds that, in these circumstances, the Respondent is not using the domain name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interest in respect of the disputed domain name.
To fulfil the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but not exclusively, be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.
On January 5, 2010, the Respondent sent an email to the Case Manager at the Center stating:
I will sell my Domain
for $50000 Only,
Do you Buy it.
Thus, the Respondent has offered to sell the disputed domain name for “valuable consideration” in excess of his reasonable out-of pocket costs, which is prima facie evidence of bad faith. Although the Respondent has indeed offered to sell the disputed domain name to the Center and not to the Complainant itself or to a competitor of the Complainant, this fact is and of itself is not germane to the finding of bad faith. As noted above, the circumstances set out in paragraph 4(b) of the Policy, in particular, the subparagraph cited above are not exclusive. The fact that the Respondent has offered to sell the domain name (albeit to the Center and not to the Complainant or to a competitor of the Complainant) is evidence of bad faith.
Moreover, the fame and unique qualities of the GOOGLE mark make it extremely unlikely that the disputed domain name was created for independent and impartial reasons.
The Panel finds that the Respondent had intended to use the Complainant's mark in bad faith when registering the disputed domain name in order to direct traffic to a website that offers similar services to those that are offered by the Complainant. In the light of the widespread knowledge of the Google mark around the world, it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <googlenetbiz.com> be transferred to the Complainant.
Cherise M. Valles
Dated: January 7, 2010