WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. G Sainath
Case No. D2010-2005
1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is G Sainath of Andhra Pradesh, India, internally represented.
2. The Domain Name and Registrar
The disputed domain name <googleonlinestorage.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, 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 November 24, 2010, 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.
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 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Response was filed with the Center on December 13, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 28, 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.
4. Factual Background
The factual background is taken from the submissions of the Complainant.
Google is a well-known, multi-billion dollar business that, among other things, provides a widely used and popular Internet search engine. The facility is available in a number of languages. Users can also check stock quotes, maps, news headlines, phonebook listings, and search billions of images. “Google Earth” lets people map out localities with street names and landmarks creating an online map. The Complainant’s primary website “www.google.com” generates revenue by providing advertisers with the opportunity to deliver measurable, cost-effective online advertising relevant to the information displayed on any given page.
Google also operates the popular website “www.youtube.com”, and others, that enable people to watch and share videos or pictures online.
The scale of the Complainant is such that its products and services reach more than 150 countries, including India. The Complainant has offices around the world including in 30 countries and currently employs over 20,000 people. Revenue for the third quarter of 2010 was USD 7,286 million.
The Complainant owns numerous foreign registrations for the trademark GOOGLE, including registrations in
India, United States (“U.S.”), United Kingdom (“U.K.”), Australia and a number of other countries.
Little factual information is available about the Respondent except what is provided in the registration record of the disputed domain name. He says in a brief message that he and a team are working on a web portal.
The disputed domain name was registered on February 2, 2009.
5. Parties’ Contentions
A. The Complainant
The Complainant has produced a listing of its trademarks internationally for the word GOOGLE running to some 38 pages. The Complainant has also produced scans of a number of trademark registration certificates, including:
GOOGLE, People’s Republic of China trademark registration no. 1471705, valid from November 7, 2000 to November 6, 2010 (expired), class 42
GOOGLE, People’s Republic of China trademark registration no. 1451705, valid from September 28, 2000 to September 27, 2010 (expired), class 35
GOOGLE, People’s Republic of China trademark registration no. 1473896, valid from November 14, 2000 to November 13, 2010 (expired), class 9
GOOGLE, Australian trademark registration no. 1130283, dated January 15, 2007, classes 36, 38
GOOGLE, Australian trademark registration no. 1049124, dated November 14, 2005, classes 16, 25, 35
GOOGLE, Australian trademark registration no. 788234, dated November 3, 2000, classes 9, 38, 42
GOOGLE, Indian trademark no. 1351910, dated April 20, 2005, class 16
GOOGLE, Indian trademark no. 845041, dated March 12, 1999, class 9
GOOGLE, Indian trademark no. 1404165, dated December 6, 2005, class 9
GOOGLE, Indian trademark no. 1404168, dated December 6, 2005, class 42 (with error)
The Complainant contends that the disputed domain name is nearly identical or confusingly similar to its trademark GOOGLE. Trademark registration documents prove that the Complainant has used its trademark since well before the date of registration of the disputed domain name. It is submitted that the gTLD directory designation “.com” should be disregarded and that the addition of the entity “onlinestorage” after GOOGLE in the construction of the disputed domain name does not eliminate confusing similarity to the Complainant’s trademark. The Complainant has not authorised the Respondent to use the trademark GOOGLE.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The trademark GOOGLE is so well known that it would be difficult for the Respondent to demonstrate any such right. Referring to “www.googleinstorage.com”, which the Panel presumes to be a misprint for the disputed domain name <googleonlinestorage.com>, the Complainant produces evidence that it resolves to a website that provides online services relating to insurance, foreign exchange trading, job facilities, a work at home portal, movie and song downloads, along with information on universities, in the manner of a search facility. In other ways including its use of script styles, it imitates the Complainant’s website.
It is contended that such usage by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. On information and belief, the Respondent is not commonly known by the name or nickname of the disputed domain name or the word ”google”.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. In particular the Respondent has intentionally attempted to secure a commercial gain by attracting Internet users to the corresponding website, by intentionally misleading them and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent’s website can cause the display of pornographic images, thereby tarnishing the Complainant’s reputation.
It is submitted that GOOGLE is a unique coined word exclusively referable to the Complainant and its services. It is extremely unlikely that the Respondent created the disputed domain name independently. The Respondent, by his use of the Complainant’s trademark, seeks to align his activities with the Complainant by misrepresentation and deception. Furthermore the website to which the disputed domain name resolves, imitates features of the Complainant’s own websites.
On September 27, 2010, the Complainant sent a cease and desist letter to the Respondent by email to the address of record, with reminders sent on October 12, 2010, October 22, 2010 and November 4, 2010. The messages were not rejected and are deemed by the Complainant to have been received but no replies were received to them.
The Complainant has submitted a number of citations of previous decisions under the UDRP that it wishes the Panel to consider as possible precedent.
The relief requested by the Complainant is the transfer to it of the disputed domain name.
B. The Respondent
A brief email dated December 13, 2010 from the Respondent has been accepted as the Response. Given its brevity it would be appropriate to quote it verbatim.
I registered (Googleonlinestorage.com) domain on 2009-02-01. We are bunch of team working on the our web portal from registration date. We dont know about Google policies. No one restricted me when i was registering the domain name. I love Google much more its a part of my life today. We are developing our web application and we improved our brand day by day. We have 24,560+ registered users till now. We are proving good customer satisfaction for internet users. We didn't use any Google logo or any other concepts here. We have our unique services and content. We not yet using any other Google brand name. Please leave us alone. We depended on this source with our families.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel accepts on the basis of the documentary evidence submitted that the Complainant has for some years held trademarks internationally, including in the Respondent’s stated domicile of India, for the word ”google”. It is further accepted that the word is unique in the context.
The disputed domain name is <googleonlinestorage.com>. Conventionally in the determination of confusing similarity under the Policy, the directory designation “.com” or its equivalent may usually be disregarded. What remains is “googleonlinestorage”, which is easily read as “google on-line storage”. The disputed domain name clearly embodies the Complainant’s widely registered and valuable trademark GOOGLE and is to that extent found to be confusingly similar to the trademark. The addition of generic words to the trademark, in this instance “on-line storage”, is found not to detract from confusing similarity, but to enhance it, since the concept of on-line storage is recognised as a form of legitimate business whereby files may be stored by and accessed from a commercial enterprise over the Internet.
The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts prima facie that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant states that it has found no evidence that the Respondent has used the disputed domain name or a corresponding name in connection with any bona fide offering of goods or services, the use to which the disputed domain name has been put being not bona fide because it trades on the Complainant’s trademark. Furthermore there is no evidence of the Respondent ever having been known legitimately by the disputed domain name, and no evidence that the Respondent has made a legitimate noncommercial or fair use of it.
The Response does not realistically seek to establish that the Respondent has any right or legitimate interest in the disputed domain name, either within the illustrative examples provided under paragraph 4(c) of the Policy or otherwise. The Panel cannot conceive of any circumstances in which the Respondent would be likely to establish such a right. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 your website or location.”
The Response is vague and unilluminating in matters of the Respondent’s intended use for the disputed domain name. From the screenprints of some pages of the corresponding website, produced in evidence by the Complainant, it appears that the Respondent’s scheme is to offer services related to file and image storage, and other services including links to insurance and the prospect of earning an income from on-line advertising. The website reproduces a number of corporate logos including those of Facebook, Xanga, MySpace, Orkut and Skype. Users are invited to earn money by uploading images, evidently on the assumption that these may be saleable. A registration facility is provided.
The Respondent in describing his intentions uses phraseology including “working on [our] web portal from registration date”, “developing our web application and we improved our brand day by day”, and “We have our unique services and content”. He refers to having “24,560+ registered users”. The Panel finds from this phraseology and from the available evidence that on the balance of probabilities the Respondent has set up the website of the disputed domain name for a commercial purpose. Whatever the exact nature of that purpose is or may become, the website must depend on the attraction of Internet users, and it may reasonably be concluded that a proportion of users will find their way to the website, for instance through search engines, as a direct result of its incorporation of the famous trademark GOOGLE.
The Panel finds, within the meaning of paragraph 4(b)(iv) of the Policy, that the Respondent is attempting to attract Internet users, for his commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the endorsement of the website, constituting bad faith use, and that the disputed domain name was registered for that purpose.
The receipt by the Center of a brief Response to the Complaint by email on December 13, 2010, demonstrated that the Respondent was able to receive messages at his email address of record and may reasonably be presumed to have received the cease and desist letters from the Complainant, which were sent to that address. These letters were in any case referred to and reproduced in the Complaint that the Respondent received and acknowledged. No reply was received to the cease and desist letters. The failure of the Respondent to reply to the Complainant’s cease and desist letters is found to be an additional factor in bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <googleonlinestorage.com> be transferred to the Complainant.
Dr. Clive N. A. Trotman
Dated: January 11, 2011