WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Gordan Martinovic, Fenix Group, Ltd. / Protected Domain Services - Customer ID: NEC-3015841 / Customer ID: NEC-3015679 / Customer ID: NEC-3015682
Case No. DME2011-0010
1. The Parties
Complainant is Google Inc. of Mountain View, California, United States of America, represented by Stojkovic & Prekajski Law Office, Serbia.
Respondent is Gordan Martinovic, Fenix Group, Ltd. of La Jolla, California, United States of America / Protected Domain Services - Customer ID: NEC-3015841 / Customer ID: NEC-3015679 / Customer ID: NEC-3015682 of Denver, Colorado, United States of America.
2. The Domain Names and Registrar
The disputed domain names <googlecrnagora.me>, <google-montenegro.me> and <googlemontenegro.me> are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On October 31, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On October 31, 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 further attached an “informative filing” to its verification response. The Center sent an email communication to Complainant on November 3, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On November 3, 2011, the Center also sent a notification that the Complaint was administratively deficient. Complainant filed an amendment to the Complaint on November 8, 2011.
The Center verified that the Complaint together with the amendment to 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 November 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 15, 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 registered the word trademark and service mark GOOGLE on the Principal Register of the United States Patent and Trademark Office, including registration number 2954071, dated May 24, 2005, in international classes (ICs) 9, 11, 12, 16, 18, 21, 25, 28 and 35, covering various goods and related retailing services, and; registration number 3140793, in ICs 9, 11,12, 16, 21, 25, 28, 35, 38 and 42, covering, inter alia, computer software for searching and indexing, and providing multiple user access to proprietary collections of information by means of global computer information networks. Complainant has used the Madrid Registration System to register the GOOGLE trademark in various countries outside the United States, including (but not limited to) Montenegro, Serbia, Croatia, Hungary and Romania.
Complainant is a United States-based enterprise operating Internet information searching and retrieval services, Internet advertising services, and other services and products. Complainant and its trademark are very well known among Internet users within the United States and other countries, including Montenegro and other countries of Eastern Europe.1 Complainant operates commercial Internet websites, inter alia, at <google.com>, and at a wide range of additional addresses incorporating country code top-level domains, e.g., <google.me> and <google.ch>.
According to the verification report of the Registrar, Name.com LLC, the common registrant of the disputed domain names is Gordan Martinovic, Fenix Group, Ltd. According to WhoIs registration data generated by the Center, the “domain creation dates” for each of the disputed domain names was January 3, 2011. When this proceeding was initiated by Complainant, the disputed domain names were protected by a privacy shield operated by Protected Domain Services. Promptly upon request by the Center for confirmation of the identity of the registrant of the disputed domain names, Protected Domain Services provided relevant registration data concerning the Respondent-in-fact to the Center. Privacy Domain Services is identified as a party to this proceeding to assure that any order of transfer directed to the Registrar is properly carried out, and that any such order of transfer shall encompass the interests (if any) of Privacy Domain Services in the registration(s). However, the Panel does not consider Privacy Domain Services responsible for the conduct of Respondent in fact, Gordan Martinovic, Fenix Group, Ltd. As used further herein, “Respondent” refers to Gordan Martinovic, Fenix Group, Ltd., unless otherwise specified.
It appears that Respondent has not used the disputed domain names to direct Internet users to active Internet websites. However, according to certified translations of Internet postings, Respondent has referred to its ownership interest in the registrations of the disputed domain names as evidence that it is a “Certified Partner” of Complainant offering advertising services in some form of business association with Complainant, and that Complainant has approved its registration and use of the disputed domain names. By way of illustration, the following are statements attributed to Respondent:
“ #18 written by GoogleSrbija …
Google should not be informed about us because they already know who we are, and they know they have partners in Serbia (Huge Media and us), since we have been awarded the Certified Partner status (Huge Media a couple of months ago, and we, that is our corporation Felix Group Ltd from California, the USA, in 2006). You can all check this out, since you have nothing else to do but to seek out dirt on the Internet … how decent work you've got. Anyway, my company in the USA (where I lived for 24 years), works with Google from the moment AdWords was initiated, that is more than 10 years ago ... And. yes. here I am, I've come to cheat Serbs. (Anyway, my company Felix Group, Ltd in the USA is presently in charge of over 1,250 campaigns for the American clients).
Google knows well what domains are offered to whom, so, if you didn't know, they are the owners of all the domains which include the word Google and the name or abbreviated form of the country (just a few examples: go to the WhoIs for the domains: google-rs.com, google-hr.com, google·ba.com, google-me.com and look at the name of the owner). Anyway. how do you think we get the domains GoogleSrbija.com andGoogleSrbija.rs, if they haven't offered us to use these domains on the basis of the long-term cooperation and promotion of their services in Serbia, and for your information, apart from the aforementioned, the following domains have been allocated to us as well:
And now I'm going to reply to some of you who have been tricked by the pathetic efforts of the author in question, whose aim is to invalidate something that brings increased turnover to hundreds of our clients:
Ivan R.: Yes. Google is a protected name and can only be used with the permission by Google. Anyway, how can you explain the fact that the sponsored advertisements for our company appear on Google browser with the exact domain GoogleSrbija.com written in it, if, otherwise, it would not be allowed to us? For example, use Google to enter some of over 100 paid key phrases in AdWords which contain the word Google and for which you will find our advertisements appearing on Google…”
The Registration Agreement in effect between Respondent and Name.com LLC subjects Respondent to dispute settlement under the Policy. The Policy was adopted by doMEn, d.o.o. (doMEn), the registry operator of the “.me” Top Level Domain (TLD), on April 30, 2008 (see WIPO Domain Name Dispute Resolution Service for .me, at http://www.wipo.int/amc/en/domains/cctld/me/index.html). The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark GOOGLE and that the disputed domain names are confusingly similar to that trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because Complainant is doing business in the market of Montenegro under the name “Google Crna Crna”, which translated into English means “Google Montenegro”, and because Respondent: (1) has not been authorized by Complainant to use the disputed domain names, (2) has not been known to the public by the disputed domain names, and (3) is not using the disputed domain names in its business. Complainant contends that Respondent has created a high risk situation in which Respondent may begin using the disputed domain names in its business, causing confusion in the market and damage to Complainant.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) registration of Complainant’s well-known trademark suggests to users that the disputed domain names are registered by Complainant or will be used for an official Google site; (2) although there is a lack of active use of the disputed domain names, passive holding with knowledge that domain names infringe on another party’s trademark rights is evidence of bad faith registration and use; (3) in view of the fame and distinctive character of Complainant’s trademark, it is impossible to envisage a potential legitimate use of the disputed domain names; (4) in light of the well-known character of Complainant’s trademark, it is extremely unlikely that Respondent created the disputed domain names without knowledge of Complainant’s rights.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted to Respondent by e-mail and express courier the Complaint and notice of commencement of this administrative proceeding. The records of the express courier show successful delivery of documents to the address provided by Respondent in its record of registration. The Panel is satisfied that the Center carried out its responsibilities under the Policy and Rules so as to provide notice to Respondent.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the GOOGLE trademark in the United States and other countries, including Montenegro, and has provided evidence of use of the GOOGLE trademark in the United States and other countries, including Montenegro (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of rights in the GOOGLE trademark. The Panel determines that Complainant has rights in the GOOGLE trademark.
The disputed domain names directly incorporate Complainant’s GOOGLE trademark, add geographic terms identifying a country, Montenegro, in English (i.e., Montenegro) and its Montenegrin form (i.e., Crna Gora),2 and the country code top-level domain “.me”. The combination of Complainant’s well-known trademark with country geographic identifiers in the disputed domain names would likely lead Internet users to believe that websites addressed by those domain names are associated with Complainant. Use of the country code top-level domain associated with the same country would likely add to Internet user confusion. The Panel determines that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in the GOOGLE trademark and that the disputed domain names are confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain names because Respondent has not made use of the disputed domain names in connection with any active website, because Respondent has not been authorized by Complainant to use its trademark in the disputed domain names, because Respondent has not been commonly known by the disputed domain names, and because any use of the disputed domain names by Respondent would likely lead to Internet user confusion based on association with Complainant's well-known trademark. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not made any active use of the disputed domain names in connection with an(y) Internet website(s), and has not furnished the Panel with any justification or legitimizing purpose for its registration and potential active use of the disputed domain names. Mere registration of the disputed domain names in circumstances involving direct incorporation of the well-known trademark of Complainant does not establish rights or legitimate interests in the disputed domain names.
The Panel finds that Respondent has failed to rebut Complainant’s prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are:
“(i) circumstances indicating that [respondent has] registered or [respondent has] 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 [respondent’s] documented out-of-pocket costs directly related to the domain name, or (ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
Respondent in this proceeding has registered three disputed domain names that incorporate the well-known trademark of Complainant. Evidence submitted by Complainant shows that Respondent has registered other domain names similarly incorporating Complainant’s well-known trademark. Registration by Respondent of the disputed domain names that incorporate Complainant’s well-known trademark combined with country geographic identifiers prevents Complainant from registering its trademark in these domain names. This suffices to establish that Respondent registered and has used the disputed domain names in bad faith in order to prevent the owner of the trademark from reflecting the mark in corresponding domain names, and that Respondent has engaged in a pattern of such conduct. This establishes bad faith registration and use by Respondent within the meaning of the Policy.
In the interests of administrative economy, the Panel does not address other potential grounds for a finding of bad faith registration and use.
The Panel determines that Respondent registered and has used the disputed domain names in bad faith within the meaning of Paragraph 4(b)(ii) 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 names <googlecrnagora.me>, <google-montenegro.me> and <googlemontenegro.me> be transferred to Complainant.
Frederick M. Abbott
Dated: December 26, 2011
1 Complainant and its counsel have provided limited information concerning Complainant’s business, degree of recognition and other factors that ordinarily are important in determining whether a trademark is well known. In this somewhat atypical case in which Complainant and its trademark are a ubiquitous presence on the Internet, the Panel is satisfied to take “administrative notice” that Complainant’s GOOGLE trade mark is well known among Internet users.
2 See Wikipedia reference at http://en.wikipedia.org/wiki/Montenegro for language use (Panel visit of December 26, 2011).