WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Nedim Calik
Case No. D2011-1065
1. The Parties
Complainant is Google Inc. of Mountain View, United States of America (“U.S.”), represented by Ranjan Narula Associates, India.
Respondent is Nedim Calik of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <googleyuz.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2011. On June 23, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 23, 2011, 2011, Tucows Inc. transmitted by email 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 July 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2011
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on August 4, 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 trademark upon which the Complaint is based is GOOGLE. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the GOOGLE mark in different countries, including the U.S. Registrations Nos. 2,806,075 dated January 20, 2004 (first use in 1997); 2,945,071 dated May 24, 2005 (first use in 1999); and 2,884,504 dated September 14, 2004 (first use in 2000), and the Turkey Registrations Nos. 859,851 dated April 28, 2005; 860,242 dated April 28, 2005; and 926,052 dated August 16, 2006.
According to the documentary evidence and contentions submitted, Complainant was founded in 1997 and is widely known as the world’s largest information search engine company. Complainant registered on September 15, 1997 the domain name <google.com>. Complainant also offers a wide range of other products and services in different languages for Internet users. The products and services provided by Complainant reach more than 150 countries around the world, including Turkey.
Complainant name and its mark GOOGLE are one of the world's best known brands. Complainant’s GOOGLE mark is so well-known that it has become a verb in the English language. Google Inc. v. 4 Fenix Group, Ltd., WIPO Case No. D2011-0790. The Panel notes that the GOOGLE mark notoriety has been recognized by previous Panels. See, also, Google Inc. v. Manoj Sharma, WIPO Case No. D2010-0090; Google Inc. v. none, Software LLC, WIPO Case No. D2009-1757.
Respondent registered the domain name <googleyuz.com> on May 9, 2008. According to the Complaint, the disputed domain name resolved to a website that imitates Complainant’s website at “www.google.com.”
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the GOOGLE mark because (i) it incorporates Complainant’s GOOGLE mark in its entirety, (ii) Respondent added the suffix word “yuz” which in Turkish means “face” to suggest that this the official site of Complainant, (iii) the addition of a suffix word does not eliminate the confusingly similar aspects of the disputed domain name; and (iv) Complainant has not licensed or otherwise permitted Respondent to use the GOOGLE mark or any other word incorporating that mark.
Complainant further argues that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has not been authorized by Complainant to register and use the domain name, (ii) GOOGLE is a coined word and there is no legitimate reason for Respondent to have chosen to acquire the disputed domain name; (iii) Respondent is not and has never been known by the name GOOGLE or by any similar name; (iv) Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name because the website to which the disputed domain name resolves has only one page; and (v) Respondent knew of Complainant’s GOOGLE mark when the disputed domain name was registered.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent knew the existence of the GOOGLE trademark in view of its reputation and worldwide awareness; (ii) Respondent registered the disputed domain name which is confusingly similar to Complainant’s trademark to intentionally attract Internet users to its own website by misleading them and creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website; and (iii) Respondent’s choice of the disputed domain name is not accidental and has been made to derive unfair monetary advantage.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The disputed domain name <googleyuz.com> incorporates the GOOGLE mark in its entirety. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. In fact, the addition of the suffix term “yuz” gives no distinctiveness to the disputed domain name since the term “yuz” means in Turkish language “face”, which suggests a connection with Complainant.
In this type of combination it is clear that the GOOGLE mark stands out and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the disputed domain name <googleyuz.com> is confusingly similar to the GOOGLE mark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in the WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, thereby shifting the burden of demonstrating rights or legitimate interests in the domain name to the respondent. If the respondent fails to carry this evidentiary burden, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1, Second Edition).
The Panel accepts Complainant’s contentions that Respondent has not been authorized by Complainant to register and use the disputed domain name, and that Respondent is not and has never been known by the name GOOGLE or by any similar name. In addition, the Panel sees no plausible explanation for Respondent’s adoption and use of the name “googleyuz” in the disputed domain name and, accordingly, concludes that the disputed domain name was selected and used by Respondent to take advantage of the notoriety enjoyed by the GOOGLE trademark and the association with Complainant brand. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
An independent investigation was conducted by the Panel by typing “www.googleyuz.com” on August 16, 2011 on a browser. The Panel notes that the disputed domain name appears to be inactive as it resorts to no webpage. Therefore, the Panel finds that Respondent is not making any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
In light of the reputation of the GOOGLE trademark, the reproduction by Respondent of that trademark in its entirety, and the combination of that trademark with the suffix word “yuz”, it is clear that Respondent in all likelihood knew of the existence of Complainant’s trademark and of its reputation worldwide.
While that finding would suffice to dispose of the issue of bad faith registration, a contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s long standing trademark registrations, including in Turkey. See, for instance, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242.
Also, as indicated in another WIPO case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325. That is what some case precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
Therefore, the Panel finds that Respondent desired to free ride on Complainant’s reputation and goodwill for commercial gain, and, accordingly, finds that Respondent registered the disputed domain names in bad faith.
In addition, the Panel concludes that the information provided by Complainant, including the contents of Respondent’s original website page, indicates bad faith in the use of the disputed domain name. The fact that the disputed domain name is now apparently inactive is irrelevant since passive holding constitutes an evidence of bad faith use where there are other factors present.
The consensus view in the WIPO URDP Panel decisions has been that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2, Second Edition). See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Ma José Catalán Frías, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case the majority of the facts referred to above are present and, therefore, the Panel concludes that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <googleyuz.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: August 17, 2011