WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Dzone Inc., Yeonju Hong/ Whois Privacy Services Pty Ltd.
Case No. D2011-1033
1. The Parties
Complainant is Google Inc., of California, United States of America, represented by Ranjan Narula Associates, India.
Respondent is Dzone Inc., Yeonju Hong/ Whois Privacy Services Pty Ltd., of the Republic of Korea and Australia, respectively.
2. The Domain Name and Registrar
The Disputed Domain Name <google-0.com> (the “Disputed Domain Name”) is registered with Fabulous.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 20, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 15, 2011.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on July 21, 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
Complainant has a plurality of registrations for the GOOGLE trademark (the “GOOGLE Mark”) around the world, in connection with a wide variety of products and services. A listing of such registrations is provided in the Exhibits to the amended Complaint. In particular, Complainant has the following: United States of America registration no. 2954071, registered on May 24, 2005, for a variety of wares and services; and Republic of Korea registration no. 1291, registered on June 2, 2000 and March 15, 2006 for, amongst other services, “data providing services”.
Complainant registered its domain name <google.com> on September 15, 1997.
Respondent1 registered the Disputed Domain Name on January 17, 2006.
5. Parties’ Contentions
Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Disputed Domain Name is confusingly similar with the GOOGLE Mark in which it has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and uses the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions and is in default.
6. Discussion and Findings
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Since Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the GOOGLE Mark and that the Disputed Domain Name is confusingly similar thereto.
In particular, Complainant contends that: it is a multi-billion dollar business with the GOOGLE Mark; its primary website, “www.google.com”, is “widely recognized as the world’s largest search engine” and receives 581 million unique visitors monthly; its GOOGLE Mark “is one of the world’s best known brands”; and its 2010 revenue was USD 29,211 million.
The Panel accepts Complainant’s preceding contentions and trademark registrations (see above Section 4) as uncontroverted, convincing and supported by the evidence, and the Panel concludes that Complainant has rights in the GOOGLE Mark.
Complainant further contends that the Disputed Domain Name incorporates its GOOGLE Mark in its entirety and that the “mere addition of the character/number ‘-‘ and ‘0’ […] is a cosmetic change and does not alter the fact that there is a likelihood of confusion”, and concludes that there is confusing similarity between the Disputed Domain Name and the GOOGLE Mark.
The Panel accepts the preceding contentions on confusing similarity as uncontroverted, convincing and supported by the evidence, and finds that the Disputed Domain Name is confusingly similar to Complainant’s GOOGLE Mark.
The Panel concludes that Complainant has met the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name.
In particular, Complainant contends that Respondent is not and has never been known by the GOOGLE Mark or by any similar name or mark, and that Respondent has not been authorized by Complainant to register or use the Disputed Domain Name. Complainant contends that there is no credible, legitimate reason for Respondent to have chosen the Disputed Domain Name.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant’s preceding contentions. By virtue of the aforedescribed rights of Complainant in the GOOGLE Mark (see above Sections 4 and 6.A) and the fact that its trademark registrations predate the registration of the Disputed Domain Name by at least several years, Complainant convincingly argues that Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name, likely do not exist.
The Panel concludes that Complainant has met the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.
In particular, Complainant contends that Respondent registered the Disputed Domain Name in bad faith by doing so after the GOOGLE Mark became known worldwide, including United States of America (the residence of Complainant) and Republic of Korea (the residence of Respondent), with knowledge of Complainant’s earlier trademark registrations and its domain name registration of <google.com> (see above Section 4) and its worldwide marketplace reputation (see above Section 6.A), with the intention of using the Disputed Domain Name in bad faith.
Complainant further contends that Respondent has in fact been using the Disputed Domain Name in bad faith by using it to redirect Internet users contrary to paragraph 4(b)(iv) of the Policy. In particular, Complainant contends that by clicking on the website corresponding to the Disputed Domain Name, “users are directed to a web page offering them a prize which can be claimed by entering their email addresses… The users are then directed to a second page to choose from a list of prizes being offered and are then induced to enter their email address and shipping information… [T]he users are duped into divulging their personal details on the pretext of being chosen as the lucky winner… [S]uch activities are not only likely to harm goodwill and reputation of Complainant in the GOOGLE Mark/name but also mislead the Internet users as to the source, sponsorship, affiliation, or endorsement of the website and [sic] create confusion amongst the trade and public”.
Complainant convincingly argues that Respondent registered and is using the Disputed Domain Name in bad faith, contrary to paragraph 4(b)(iv) of the Policy. In particular, the Panel considers that Respondent attempted to attract Internet users for the “commercial gain” of obtaining users’ email address and shipping information.
The Panel concludes that Complainant has met the third requirement of paragraph 4(a) of the Policy.
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 Name <google-0.com> be transferred to Complainant.
Mark Ming-Jen Yang
Dated: July 26, 2011
1 The initial Complaint named as Respondent, another entity which appears to the Panel to be a “privacy shield service” of some kind to hide the identity of the true registrant of the Disputed Domain Name. The Panel considers the party named as Respondent in the amended Complaint, as the one having registered the Disputed Domain Name. See below Section 6 about the appropriate inferences the Panel considers itself entitled to make in view of Respondent’s complete failure to respond to the Complaint.