The Complainant is Google Inc., of California, United States of America, represented by Ranjan Narula Associates of India.
The Respondent is Rohini Kharma / Ranjan Narula Associates of India.
The disputed domain name <googlecashwealth.com> is registered with Dynadot, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 17, 2009, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the disputed domain name. On December 18, 2010, Dynadot, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on January 25, 2010. 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 Complainant is a Delaware corporation located in Mountain View, California. It hardly needs stating that, since the business was founded in 1997, the Complainant's Internet search service “Google” has become one of the largest, most highly recognized, and widely used Internet search services in the world.
Currently, the Complainant's engine maintains one of the largest collections of searchable documents in the world. Its website at “www.google.com” is one of the most popular destinations on the Internet. For example, comScore and Bloomberg.com have ranked the Complainant's websites as the most visited group of websites in the world. Nielsen NetRatings has ranked its Google's search engine as the number one search engine.
The Complainant has won a range of industry awards dating back to 1998.
The Complainant owns an international portfolio of registered trademarks for GOOGLE. By way of example, the Complainant has supplied a printout for United States trade mark number 3,140,793 for the stylized word “Google” registered September 12, 2006, in classes 9, 11, 12, 16, 18, 21, 25, 28, 35, 38 and 42.
The disputed domain name was registered in the name of “J Vinay Sagar” on July 31, 2008.
On September 15, 2009, the Complainant sent a cease and desist letter to J Vinay Sagar asserting that he was using the domain “to earn easy and fast money by way of online advertising”.
On the same date, Mr Sagar emailed in response to say that he had removed the website, that he had started it because he saw many other websites using the “Google” name and that he did not get any benefit from it. He added that “we are educating people about google adwords” and that anyone had the right to teach that concept. He stated that “we will stop marketing with that name”.
The Complainant's lawyers replied on September 28, 2008, stating that their client had not stopped Mr Sagar from teaching the concept but that his activities misrepresented his service as being authorized by the Complainant, which was objectionable. They invited Mr Sagar to initiate transfer of the disputed domain name to the Complainant.
On November 15, 2009, Mr Sagar emailed to say that he had transferred the disputed domain name “on your name”. In fact, the Respondent had changed the registrant name to that of the Complainant's lawyers but, despite a number of requests, he failed to initiate the necessary procedure to transfer control of the disputed domain name to the Complainant.
Given that Mr Sagar remains in control of the disputed domain name, in referring to “the Respondent” hereafter, the Panel draws no distinction between the current registrant and Mr Sagar, the previous registrant.
(The Panel also wishes to observe that whilst the complaint included a helpful summary of the email correspondence between the parties, the relevant exhibit consisted of a number of lengthy and repetitive email strings, whereby for example the cease and desist letter was reproduced six times but other correspondence mentioned in the complaint was not included at all. The Panel would make a plea to parties when exhibiting email correspondence to include only one copy of each email in the correct chronological order.)
The Complainant's GOOGLE mark identifies Google's award-winning, proprietary, and unique search services, search engine technology, and associated products and services. It has been widely promoted among members of the general consuming public since 1997, and has exclusively identified the Complainant. As a result, the mark and name symbolize the tremendous goodwill associated with Google and are property rights of incalculable value. Due to widespread and substantial international use, this mark and name have become famous.
The Complainant has rights in the GOOGLE mark that predate the registration date of the Domain Name.
A domain name is nearly identical or confusingly similar to a complainant's mark when it fully incorporates said mark. Here, the domain name incorporates the famous GOOGLE mark in its entirety, and is confusingly similar to it.
A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another's mark. The disputed domain name merely adds the generic or highly descriptive terms “cash” and “wealth” to the GOOGLE mark.
Given Google's branding policy whereby Google typically uses its house mark, GOOGLE, with a descriptive word or phrase, users seeing the domain name are even more likely to believe the domain name originates with Google.
As UDRP panels have noted, any respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because the Complainant's mark is so well known.
On information and belief, the Respondent is not commonly known by the disputed domain name, or any name containing the Complainant's GOOGLE mark.
The Complainant has not authorized or licensed the Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating the Complainant's trademark is strong evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
The evidence overwhelmingly supports the conclusion that the Respondent registered and is using the disputed domain name in bad faith. First, the fame and unique qualities of the GOOGLE mark make it extremely unlikely that the Respondent created the disputed domain name independently. Even constructive knowledge of a famous mark like GOOGLE is sufficient.
The Respondent has failed to comply with demands from Google regarding transfer of the domain name. Such failure to respond to a cease-and-desist letter indicates bad faith registration and use of a domain name.
The Respondent did not reply to the Complainant's contentions.
The Complainant has rights in the mark GOOGLE arising from its registered trademarks mentioned above as well as common law rights derived from the extensive, worldwide use of that distinctive name since 1997.
The disputed domain name consists of the Complainant's trademark combined with the descriptive terms “cash” and “wealth”. Those descriptive terms are insufficient to differentiate the domain name from the trademark.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The Panel therefore finds that the Complainant has established the first element of the Policy.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any bona fide offering of goods or services at the website of the disputed domain name. (See further below.)
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
It is obvious from the Respondent's reply to the Complainant's cease and desist letter that the Respondent registered the disputed domain name with the Complainant's trademark in mind.
What is not clear is exactly how the disputed domain name has been used. The Respondent removed the website at the domain name on receipt of the Complainant's letter. The Complainant asserts that, previously, the website was used “for attracting viewers to earn easy and fast money by way of online advertising”. However, no screenshot of the former website has been provided.
In correspondence, the Complainant did not deny the Respondent's claim to have has used the disputed domain name to educate people about the Complainant's online advertising service, Google Adwords, but asserted that the Respondent's activities misrepresented his service as being authorized by the Complainant.
The Respondent did not contest that claim in correspondence nor did it see fit to file a response in this proceeding. On the contrary, it agreed in correspondence to transfer the disputed domain name to the Complainant (albeit that the Respondent did not in fact follow through). In these particular circumstances, the Panel is prepared to conclude that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.
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 <googlecashwealth.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: February 8, 2010