WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Ning Yang
Case No. D2011-1044
1. The Parties
1.1 The Complainant is Google Inc. of Mountain View, United States of America, (the “Complainant”) represented by Ranjan Narula Associates, India.
1.2 The Respondent is Ning Yang of Victoria, Australia (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <googlelike.com> (the “disputed Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”)
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2011. On June 20, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On June 20, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 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 June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2011.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on July 27, 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
4.1 The Complainant is Google Inc., a company organized and existing under the laws of Delaware with its corporate office at 1600 Amphitheatre Parkway, Mountain View California 94043, United States. The Complainant’s business under the name “Google” founded in 1997 has since grown into a multi-billion dollar business. The Complainant’s primary website “www.google.com” registered on September 15, 1997 is widely recognized as the world’s largest search engine and generates revenue by providing advertisers with the opportunity to deliver measurable, cost effective online advertising. The Complainant also offers a wide range of other products and services such as software applications including the “Google Earth” a service that allows people to map out their localities with street names and landmarks thereby creating an online world map. The Complainant’s revenue for the year 2010 was USD 29,321 million.
4.2 The Respondent’s address is 7 Montclair St. Point Cook, Victoria 3030, Australia and according to the WhoIs database, the Respondent registered the disputed Domain Name, <googlelike.com> on February 13, 2011.
5. Parties’ Contentions
5.1 The Complainant owns numerous foreign trademark registrations for the well known GOOGLE trademark, including Australia, Canada, United Kingdom of Great Britain and Northern Ireland, Switzerland, India and a large number of other countries. It is on record that “comScore” and “www.bloomberg.com” have ranked GOOGLE as the most visited group of websites in the world. The Complainant’s GOOGLE Network reaches more than 80% of worldwide Internet users. Apart from “www.google.com” the Complainant also owns and operates a number of other GOOGLE domains worldwide. The Complainant states further it has used the GOOGLE trademark continuously and established rights in the trademark prior to the Respondent registering the dispute Domain Name on February 13, 2011 by reason of so many trademark registrations issued and applications filed, in numerous countries, before that date. The Complainant in this regard cites the case of Google Inc. v. Smith Smithers, NAF Claim No. 061000826563.
5.2 The Complainant submits further that the disputed Domain Name <googlelike.com> is nearly identical or confusingly similar to the Complainant’s famous GOOGLE trademark as it incorporates the mark in its entirety with the intention of attracting Internet users and consumers for commercial gain. The Complainant contends in this regard that the mere incorporation of a suffix or the mere addition of the word “like” does not eliminate the fact that there is a likelihood of confusion. The Complainant in support relies on the case of PepsiCo. Inc. v. Pepsi SRL, WIPO Case No. D2003-0696 where the disputed domain names in that case such as <pepsiadventure.net> and <pepsitennis.com> were held to be confusingly similar to the Complainant’s PEPSI mark, as clearly, those disputed domain names wholly incorporated the PEPSI trademark.
5.3 The Complainant also contends that any Respondent will be hard pressed to show that it has rights or legitimate interests in respect of the disputed Domain Name as the Complainant’s GOOGLE trademark is so well known. It is further argued that the Respondent has not been authorized by the Complainant to register or use the disputed Domain Name and that the Respondent’s sole purpose for choosing the disputed Domain Name was to exploit the Complainant’s famous GOOGLE trademark to generate web-traffic and confuse Internet visitors. The Respondent is not and has never been known by the GOOGLE trademark or name as shown on the Respondent’s information on the Registrar’s WhoIs database.
5.4 The Complainant further contends that the Respondent is not carrying any active business from the offending website as a click on the website “www.googlelike.com” shows a blank page. Accordingly, such use by the Respondent is neither a bona fide nor a legitimate noncommercial or fair use of the disputed Domain Name. The goodwill attached to the GOOGLE trademark belongs to the Complainant and has been improperly appropriated by the Respondent; thus, such conduct can never constitute a legitimate interest.
5.5 The Complainant also asserts that when the Respondent registered the disputed Domain Name it must have been aware of the Complainant’s worldwide activities, its trademarks and its domain name. It is asserted that these facts establish a prima facie case that the Respondent has no right or legitimate interest in the disputed Domain Name and that pursuant to the Policy the burden shifts to the Respondent to show it does have a right or legitimate interest in the disputed Domain Name as stipulated in the case of Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
5.6 On the question of registration and use in bad faith, the Complainant submits that the evidence overwhelmingly supports the conclusion that the Respondent registered and is using the disputed Domain Name in bad faith on the following grounds; the Respondent registered the disputed Domain Name <googlelike.com> on February 13, 2011, despite the famous and distinctive nature of the Complainant’s GOOGLE trademark; a significant period of time had transpired after the Complainant commenced trading with the GOOGLE trademark in numerous countries all over the world including Australia where the Respondent is based before the infringing registration took place; the Respondent registered the disputed Domain Name which is deceptively and confusingly similar to the Complainant’s trademark with the sole intention of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website; the Respondent’s registration in addition, significantly postdates the registration of the Complainant’s GOOGLE Domain Names and trademark, under which circumstances, the Respondent ought to have had notice of the existence of the Complainant’s trademark before registering the disputed Domain Name. In this regard the Complainant relies on Google, Inc. v. Abercrombie1, NAF Claim No. 0111000101579.
5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondents default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; (iii) and that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each these three elements in these proceedings.
A. Identical or Confusingly Similar
6.3 This Panel without any hesitation finds that the disputed Domain Name namely, <googlelike.com> is confusingly similar to the well known GOOGLE trademark owned exclusively by the Complainant. Without any doubt the disputed Domain Name wholly incorporates the GOOGLE trademark. This Panel is therefore satisfied as the Complainant contends that the mere addition of the word “like” and the suffix “.com” does not in any way sufficiently distinguish the disputed Domain Name from the Complainant’s trademark and equally does not prevent the likelihood of confusion in the minds of Internet visitors to the infringing website.
6.4 In arriving at the finding above, the Panel has placed reliance on the case of PepsiCo. Inc. v. PEPSI SRL, WIPO Case No. D2003-0696 where the domain names <pepsiadventure.net> and <pepsitennis.com> were held to be confusingly similar to the Complainant’s trademark PEPSI. Just as in this case the disputed domain names incorporated wholly and entirely the complainant’s trademark.
6.5 Accordingly, the Panel finds that the Complainant has successfully established the disputed Domain Name to be confusingly similar to the Complainant’s GOOGLE trademark in accordance with paragraph 4(a) of the UDRP.
B. Rights or Legitimate Interests
6.6 The Panel finds also that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interest in the disputed Domain Name within the ambit of paragraph 4 (c) of the Policy. As the Complainant argues, there is no evidence of any relationship between the Respondent and the Complainant or evidence of consent or any license issued to the Respondent by the Complainant. The Panel is also satisfied that as the Respondent is not carrying out any activities on the infringing website and as the Respondent has never been commonly known by the name or nickname of the disputed Domain Name or any name containing the Complainant’s trademark, the Respondent has failed to adhere to the stipulated requirements necessary to establish a bona fide offering of goods and services as propounded in Oki Data Americas Inc. v.ASD Inc., WIPO Case No. D2001-0903 and Paragraph 4 (c) (i) of the Policy.
6.7 Furthermore, the Panel accepts that the Respondent has deliberately registered the disputed Domain Name plainly for commercial purposes and to assist in the impersonation of the Complainant, accordingly such conduct cannot constitute legitimate or fair use of the disputed Domain Name.
6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests.
C. Registered and Used in Bad Faith
6.9 With regards to the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and has continued to use the disputed Domain Name in bad faith. The Panel in this regard has taken into account a number of uncontested factors in arriving at this conclusion. Firstly, the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide exclusive rights in the GOOGLE trademark dating back to September 1997 and the sale of the Complainant’s products and services in well over 150 countries including Australia where the Respondent is based. Secondly, the Respondent with the deliberate intention to create a likelihood of confusion with the Complainant’s trademark in the minds of Internet visitors elected to register the disputed Domain Name in February 2011. Accordingly, as the Complainant argues, the Respondent must be deemed to have had actual or constructive notice of the Complainant’s established rights in the GOOGLE trademark, which considered on its own, is clear evidence of bad faith registration. In this regard, reliance is placed on the case of Google, Inc. v. Abercrombie1. NAF Claim No. 0111000101579 where it was held that for a famous trademark such as GOOGLE constructive notice is sufficient to fix the Respondent with notice or knowledge of the long existing trademark. Thirdly, as the Complainant repeatedly asserts the Respondent registered the disputed Domain Name plainly for commercial gain or illegal monetary advantage to be derived from impersonating the Complainant or deceiving the innocent public into believing that it is part of the Complainant’s company and that its activities have been authorized or approved by the Complainant. Fourthly, the Panel has equally taken into account the Respondent’s failure to challenge the evidence and the submissions made by the Complainant and have therefore made such adverse inferences as it deems fit against the Respondent.
6.10 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b) (iv) of the Policy.
7.1 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 <googlelike.com> be transferred to the Complainant forthwith.
Dated: August 10, 2011