WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. 4 Fenix Group, Ltd.
Case No. D2011-0790
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 4 Fenix Group, Ltd. of La Jolla, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names
<googlesrbija.com> are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On May 6, 2011, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. Name.com LLC sent an email to the Complainant on May 6, 2011 providing the registrant and contact information. The Complainant filed an amended Complaint on May 9, 2011.
The Center verified that the Complaint together with the amended 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 May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 1, 2011. The Respondent sent emails to the Center on June 2, 2011 and June 3, 2011.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 9, 2011. 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 Complainant is a United States of America company that provides, among other Internet services, an information search engine that is accessed on a worldwide basis. The Complainant owns numerous trademark and service mark registrations across the globe, including with the United States Patent and Trademark Office (“USPTO”), for its GOOGLE mark (e.g., USPTO Registration No. 2,945,071: issued May 24, 2005). The Complainant’s GOOGLE mark is so well known that it has become a verb in the English language.
The Respondent owns the disputed domain names, <google-bih.com>, <google-crnagora.com>, <googlecrnagora.com>, <google-hrvatska.com>, <googlehrvatska.com>, <google-montenegro.com>, <googlemontenegro.com> and <googlesrbija.com>. The date of registration for the disputed domain names is January 3, 2011, save for the disputed domain name, <googlesrbija.com>, which was registered on December 18, 2010. The disputed domain name <googlesrbija.com> is used for a website that references the Complainant’s services, while the other disputed domain names are not in use.
5. Parties’ Contentions
- Founded in 1997, the Complainant is a United States company that operates the world’s largest Internet search engine through its primary website at the domain name, <google.com>. Its “Google” brand has become one of the best known worldwide, almost entirely by word-of-mouth recognition and advertising.
- The Complainant’s services reach more than 80% of worldwide Internet users in more than 150 countries, and the Complainant’s primary website hosts over 581 Million unique users per month. Thus, the Complainant enjoys substantial revenue through one of the world’s largest online advertising networks, based on advertisements placed on individual pages generated through Internet searches.
- Consistently honored for its technology and services, the Complainant also offers many other Internet based products. As a result, the Complainant’s GOOGLE service mark has generated tremendous goodwill and become famous internationally.
- The Complainant owns numerous service mark registrations in jurisdictions throughout the world for its GOOGLE mark, including the United States, the United Kingdom of Great Britain and Northern Ireland, the People’s Republic of China and India.
- Of the disputed domain names, only <googlesrbija.com> is operational, and it resolves to an advertisement/marketing portal that falsely suggests a connection with the Complainant.
- The Complainant initiated written and telephonic communications with the Respondent, requesting that the Respondent cease and desist from using the disputed domain names. Despite such communication, the Respondent was unwilling to transfer the disputed domain names and continues to misuse the same, including the misleading association with the Complainant.
- The disputed domain names, <google-bih.com>, <google-crnagora.com>, <googlecrnagora.com>, <google-hrvatska.com>, <googlehrvatska.com>, <google-montenegro.com>, <googlemontenegro.com> and
<googlesrbija.com> are nearly identical or confusingly similar to the Complainant’s GOOGLE mark, which is a coined word. All the names fully incorporate the mark and use it to attract Internet users. The various suffixes serve only to add to the likelihood of confusion and the erroneous suggestion that the names are associated with the Complainant.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has never authorized the Respondent to use the GOOGLE mark or to incorporate it in the registration of domain names.
- The disputed domain names represent neither natural words nor common names. They include the Complainant’s mark with geographical abbreviations. The Respondent has never been commonly known by the Complainant’s GOOGLE mark or any similar name. The Respondent is not using the disputed domain names for a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner.
- The disputed domain names were registered and are being used in bad faith. Upon registration of the names, the Respondent was aware of the Complainant’s activities and its GOOGLE mark, due to worldwide fame and uniqueness. The Respondent seeks to derive unfair monetary advantage through use of the disputed domain names. Thus, the Respondent has intentionally attempted to attract for commercial gain Internet users by the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Although the Respondent did not file a formal Response in compliance with the requirements of the Policy, the Respondent’s informal emails to the Center did set forth some contentions in the Respondent’s defense. The Panel, in its discretion with respect to admissibility of evidence and to insure “that each Party is given a fair opportunity to present its case” (See the Rules, General Powers of the Panel, subparagraphs (d) and (b)), has decided in rendering its ruling below to consider those contentions, which are summarized as follows:
- The Respondent has purchased the disputed domain names for the sole purpose of promoting “Google Adwords” advertising services as used in advertising the businesses of the Respondent’s clients. As indicated by the Respondent’s customer number, the Respondent has been a longtime “Google Adwords” member and is using that service to run many campaigns for customers in Serbia and Montenegro. The Complainant benefits from the Respondent’s use of the disputed domain names, so there should be no complaint.
- There are thousands of domain names that incorporate the word “google” and the Complainant would have to prohibit all of them for this Complaint to have merit.
- Adopting the Complainant as its advertising source, the Respondent has spent nearly USD 27,000 in connection with the “Adwords” advertising system. The Respondent incorporates the word “google” in the disputed domain names to simply inform Internet users of what the Respondent’s business is.
6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Complainant may prevail and obtain a transfer of the disputed domain names, <google-bih.com>, <google-crnagora.com>, <googlecrnagora.com>, <google-hrvatska.com>, <googlehrvatska.com>, <google-montenegro.com>, <googlemontenegro.com> and <googlesrbija.com> if the Complainant demonstrates to the Panel that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names: and
- The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has supplied pertinent evidence (Exhibit 6a) of its valid registrations of the GOOGLE service mark with various jurisdictional authorities, including the USPTO. Therefore, the Panel holds that the Complainant has rights in that mark sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See, Ticketmaster v. Nextnet Tech, WIPO Case No. D2008-1479 (“Complainant has established its rights in the TICKETMASTER mark by virtue of the evidence of its United States federal trademark registrations.”): and Apple Computer, Inc. v. Apple-Computers c/o Marcus Grey, NAF Claim No. FA535416 (“Complainant has established in this proceeding that it has rights to the APPLE mark as evidenced by its registration with the USPTO.”).
The Panel notes that all of the disputed domain names, <google-bih.com>, <google-crnagora.com>, <googlecrnagora.com>, <google-hrvatska.com>, <googlehrvatska.com>, <google-montenegro.com>, <googlemontenegro.com> and <googlesrbija.com> incorporate the Complainant’s service mark, GOOGLE, in full. To each name is added a geographical term or an abbreviation of a geographical term (i.e, for Slavic countries and regions of Serbia, Montenegro, Bosnia and Herzegovina): some with a hyphen, some without. Finally, all of the disputed domain names include the obligatory gTLD, “.com”. In the Panel’s estimation, all of the names, if not identical to the Complainant’s mark, are at least confusingly similar to the same. The Complainant’s fanciful mark appears first in – and thus dominates – every disputed domain name. It has been well established in prior UDRP decisions that the addition of geographical terms, short abbreviations, hyphens and/or gTLDs fails to distinguish domain names from established trademarks or service marks when those marks are wholly contained in such names. See, for example, Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (finding <hondaindia.com> to be confusingly similar to the HONDA mark, stating that “Complainant’s trade mark is famous around the globe. The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added.”): Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 (where the panel found the disputed domain name, <ikea-korea.com>, to be confusingly similar to the IKEA trademark): Health Devices Corp. v. Aspen S T C, NAF Claim No. FA158254 (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy [paragraph] 4(a)(i).”): and EPSON Europe BV v. M31 Internet Palma, S.L., WIPO Case No. D2005-0604 (“To carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) ‘.com,’ because such gTLD has no legal significance.”).
The Panel determines that the Complainant has satisfied Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
If the Complainant can sustain a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, then the burden shifts to the Respondent to persuade the Panel that the Respondent does possess such rights or interests. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests”): and Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Claim No. FA154527. As the Complainant has established its rights in the GOOGLE mark as noted above and asserted unequivocally that it never granted the Respondent authority to use that mark in any manner, the Panel believes that the Complainant has made a prima facie case.
In rebuttal, the Respondent contends that, per Paragraph 4(c)(i), it is using – or preparing to use – the disputed domain names “in connection with a bona fide offering of goods or services,” namely: services related to the Complainant’s “Adwords” system. The Respondent claims to be a “member” of that system, but has not supplied the Panel with any evidence as to whether such membership grants the Respondent an authority to act as a sales or service agent of the system. In any event, prior UDRP panels have held that even if a respondent is not an authorized agent, that respondent may utilize a complainant’s trademark or service mark in a disputed domain name only if certain circumstances are met. See, AB Electrolux v. Ong Nguyen Huu Vinh, WIPO Case No. D2011-0318: and Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (“Respondent is not an authorized dealer. This is not dispositive because, in principle, it is not an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark”). Those circumstances include that, the goods or service are actually being offered, the goods or services are exclusively those of the complainant, and the relationship between the respondent and complainant be made absolutely clear at the respondent’s website. See, ERA Franchise Systems LLC v. Slawomir Bruszewski, NAF Claim No. FA1370591: and Phillip Morris, supra.
In this case, the Complainant has supplied the Panel with persuasive evidence (Exhibit 10) of the contents of the Respondent’s website found at the disputed domain name, <googlesrbija.com>. In its rather meager Response, the Respondent has failed to present any direct challenge to that evidence. Upon its examination of said contents, the Panel discerns no clear indication of the Respondent’s relationship to the Complainant; that is to say, the Respondent’s website does not suggest that the website is not owned by the Complainant or a subsidiary of the Complainant. As such, in the Panel’s view, the Respondent’s use of the disputed domain name, <googlesrbija.com>, fails to meet the third criterion listed above, and so such use does not fall within the parameters of paragraph 4(c)(i).
The Complainant has contended, without contradiction from the Respondent, that the other disputed domain names were not in use at all at the time of the Complainant. Since the Respondent has not contended that it is in demonstrable preparation to use those names in any manner that differs from its employment of <googlesrbija.com>, the Panel determines that the Respondent’s use of those names also fails to comply with paragraph 4(c)(i).
With respect to Policy paragraph 4(c)(ii), the Panel finds that the Respondent has furnished no evidence that it, 4 Fenix Group, has been commonly known as any of the disputed domain names. As to paragraph 4(c)(iii), the Panel concludes that the use referred to above of the disputed domain names constitutes neither legitimate, noncommercial nor fair use of said names.
Thus, the Panel rules that the Respondent has failed to rebut the Complainant’s prima facie case.
The Panel thus determines that the Complainant has satisfied Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant’s service mark, GOOGLE, is so well known worldwide that it has become a verb in the English language. The Panel cannot think of many other instances of a similar circumstance. The Panel is thus assured that the Respondent was well aware of the fame of the Complainant’s mark when registering the disputed domain names. In the case of the disputed domain name, <googlesrbija.com>, the Respondent intentionally used that fame to attract Internet users, who would likely suffer confusion as to whether the Complainant was the source of, affiliated with or sponsored or endorsed the website site found there. Certainly, the Respondent sought to gain commercially from the traffic so obtained. Therefore, the Panel finds that the Respondent registered and is using that disputed domain name in bad faith per Policy paragraph 4(b)(iv).
The other disputed domain names have not been put into use by the Respondent. However, there have been numerous prior UDRP decisions that have held that nonuse of a disputed domain name can constitute bad faith use, if there are other factors in the case that are indicative of bad faith. See, PwC Business Trust v. CulitoSa, WIPO Case No. D2001-1109, and the cases cited therein. The Panel believes that the Respondent’s bad faith registration and use of the <googlesrbija.com> domain name, as found by the Panel above, constitutes a sufficient factor of bad faith in this case, so as to render the nonuse of the other disputed domain names as grounds for the Panel to find that those names were also registered and are being used in bad faith.
The Panel determines that the Complainant has satisfied Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <google-bih.com>, <google-crnagora.com>, <googlecrnagora.com>, <google-hrvatska.com>, <googlehrvatska.com>, <google-montenegro.com>, <googlemontenegro.com> and <googlesrbija.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: June 23, 2011