Complainant is Google Inc. of California, United States of America represented by Ranjan Narula Associates of India.
Respondent is ABC, Trung Toan with an apparent address of Ha Noi, United States of America.
The disputed domain name <vietnamadwords.com> (the “Domain Name”) is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 16, 2010, the Center transmitted by e-mail to Name.com LLC. a request for registrar verification in connection with the Domain Name. On February 17, 2010, Name.com LLC., transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on March 17, 2010.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 19, 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 following factual background is derived from the Complaint and annexes thereto, all of which is undisputed by Respondent and found by the Panel to be plausible.
Complainant, whose annual revenues are in the billions of dollars, owns and operates the famous Google Internet search engine. Since 2001, Complainant has offered advertising services under the mark ADWORDS. This well-known advertising service yields billions of dollars in revenues annually. The ADWORDS mark was registered with the United States Patent and Trademark Office in December 2003. The mark was also registered in Vietnam in May 2007.
Respondent registered the Domain Name on October 20, 2008. The website to which the Domain Name resolved at one time featured the word “Google” (sometimes in a design very similar to the famous Google design mark) and the word “adwords”. The site content appeared to be primarily in the Vietnamese language, with some English commercial content as well.
Complainant learned of Respondent's website in December 2009. Complainant then sought the voluntary transfer of the Domain Name and the cessation of Respondent's allegedly infringing activities at the website. According to the Complaint, Respondent expressed willingness to comply with these requests, but did not follow through.
Complainant's contentions, to the extent not set forth above in the Factual Background section, are set forth in the Discussion and Findings section below in the context of the three elements required for a transfer of the Domain Name under the Policy.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel finds that Complainant has registered trademark rights in ADWORDS. The record supports this conclusion, and Respondent has not disputed it.
The Domain Name <vietnamadwords.com> incorporates Complainant's mark in its entirety, and adds the geographically descriptive word Vietnam. In the Panel's view, the additional word does not diminish the confusing similarity between Complainant's mark and the Domain Name. See VeriSign, Inc. v. Nandini Tandon, WIPO Case No. D2000-1216 (November 16, 2000) (involving <verisignindia.com>).
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A [r]espondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Finally, Respondent has not claimed in this proceeding any noncommercial or fair use of the ADWORDS mark in its Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Without citing the provision expressly, Complainant appears to rely chiefly on paragraph 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument.
The Panel finds that Respondent is in bad faith under paragraph 4(b)(iv). The Panel concludes that Respondent had Complainant and its ADWORDS mark in mind when registering the Domain Name. The former prominent use of the word Google on Respondent's website makes this conclusion virtually inescapable. Complainant alleges, and Respondent has not denied, that Respondent's conduct constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the ADWORDS mark and the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <vietnamadwords.com> be transferred to Complainant.
Robert A. Badgley
Dated: March 26, 2010