WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Eamonn Smyth

Case No. D2011-1023

1. The Parties

The Complainant is Google Inc., of California, United States of America, represented by Ranjan Narula Associates, India.

The Respondent is Eamonn Smyth, of Swindon, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <googlehire.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 16, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 17, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2011.

The Center appointed Richard Tan as the sole panelist in this matter on July 29, 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 company that operates the well-known Internet search engine under the name GOOGLE at its primary domain name <google.com> which was registered on September 15, 1997. It is now a multi-billion dollar business and the GOOGLE brand and trademark is one of the world’s best known brands. Its search engine is accessible from desktop PCs and most mobile and wireless platforms.

The Complainant owns numerous trademark registrations of the GOOGLE mark, including in the United Kingdom, Australia, Argentina, Benelux, Brazil, Canada, Chile, China, India, Republic of Korea, Mexico, Norway, Poland, Singapore, United States and other countries around the world.

The Complainant’s website is one of the most popular destinations on the Internet receiving 581 million unique visitors per month. It has been ranked the number one search engine in numerous countries and is one of the most visited websites in the world.

The Complainant’s website “www.google.com” generates vast advertising revenues by allowing advertisers to advertise online on its website page. The Complainant’s total advertising revenue for 2010 was USD 28,236 million.

Besides its search functions, the Complainant also offers a wide range of other products and services such as software applications including the “google desktop” search software and other Internet based tools such as its “google earth” service that lets people map out their localities with street names and landmarks creating an online map. Its other Internet-related products and services include an enterprise search appliance box, price search engine, news, maps, web mail with instant messaging, office productivity services, and an online payment service.

Apart from <google.com.>, the Complainant also owns and operates a number of other “google” domain names worldwide. The Complainant’s GOOGLE network is said to reach more than 80% of worldwide Internet users. Its products and services reach more than 150 countries worldwide and it has offices around the world including in the United Kingdom, Australia, China, Hong Kong, China, Japan, Republic of Korea, Singapore, Taiwan Province of China, Denmark, Finland, France, Germany, Ireland, Italy, Netherlands, Norway, Poland, Russian Federation, Spain, Sweden, Switzerland, United States, Canada, Argentina, Brazil, Mexico, Egypt, Israel, Turkey and United Arab Emirates. The Complainant also offers its products and services in more than 100 languages. It currently employs over 20,000 employees worldwide. It has also been honoured for its technology and its services, receiving numerous industry awards.

The Respondent is an individual with an address in the United Kingdom and registered the disputed domain name on January 21, 2010. The disputed domain name currently resolves to a website that does not carry out any activities and has no substantive content but displays a number of sponsored listings and links to other websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends it has used the GOOGLE mark continuously since well prior to the registration date of the disputed domain name on January 21, 2010.

The Complainant contends that it owns many trademark registrations of the GOOGLE mark around the world that were registered prior to January 21, 2010 and which accordingly predated the date of registration of the Respondent’s disputed domain name.

It contends firstly, that the disputed domain name <googlehire.com> is nearly identical or confusingly similar to the Complainant’s trademark as the former incorporates the famous GOOGLE mark in its entirety and the incorporation of a suffix such as “hire” does not eliminate the confusingly similar aspects of the disputed domain name. The Complainant cites previous UDRP decisions such as PepsiCo. Inc. v. PEPSI SRL, WIPO Case No. D2003-0696 (holding that <pepsiadventure.net>, <pepsitennis.com> and other domain names were confusingly similar to the complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).

The Complainant contends that it owns the domain name <google.com> and the Respondent’s disputed domain name is derived by merely incorporating the Complainant’s trademark GOOGLE in its entirety to attract Internet users and consumers for commercial gain. The mere addition of the word “hire” does not alter the likelihood of confusion, and in fact suggests that the disputed domain name refers to the Complainant or that the Respondent is associated with the Complainant which is not the case.

The Complainant accordingly contends that the disputed domain name is confusingly similar to the Complainant’s GOOGLE mark in which the Complainant has rights.

The Complainant contends secondly, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not granted any license or authorization to the Respondent to use its marks in any manner or to register or use the disputed domain name, and there is no affiliation between the Complainant and the Respondent.

The Complainant contends that there is no credible or legitimate reason for the Respondent to have chosen the disputed domain name other than to use the fame of the GOOGLE mark to generate web-traffic and to confuse Internet users visiting the Respondent’s site when looking for the Complainant and their famous suite of services. The term “googlehire” is not a natural word nor a common name, nor one which is a common or natural descriptor for the use which is being made of the disputed domain name. Further, the Respondent is not and has never been known by the GOOGLE name or by any similar name or nickname. The Respondent is not carrying out any activities from his website, which only displays "sponsored listings" but does not have any substantive content.

The Complainant contends that the Respondent registered the disputed domain name for the purpose of reselling and not for carrying out any business. Such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

The Complainant further contends that when the Respondent registered the disputed domain name, it was aware of the Complainant's activities, its trademarks and its “google” domain names and that these facts establish a prima face case that the Respondent has no rights or legitimate interests 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 interests.

The Complainant further contends that the disputed domain name was plainly registered for commercial purposes and as such, it cannot constitute a legitimate noncommercial or fair use of the disputed domain name. The adoption by the Respondent of the disputed domain name was plainly designed to assist it in impersonating the Complainant. Its use of the disputed domain name cannot constitute a bona fide offering of goods or services.

The Complainant accordingly contends that based on the foregoing the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant contends thirdly, that the disputed domain name has been registered and used in bad faith.

The Complainant contends that the evidence overwhelmingly supports the conclusion that the Respondent registered and is using the disputed domain name in bad faith. The Complainant relies on the fame and unique qualities of the GOOGLE Mark which it argues make it extremely unlikely that the Respondent created the disputed domain name independently. It argues that the Respondent knew of the Complainant’s trademark GOOGLE at the time of registration of the disputed domain name and in any event, constructive knowledge of a famous mark like GOOGLE is sufficient to show bad faith registration and use.

It further contends that the Respondent registered the disputed domain name which was deceptively and confusingly similar to the Complainant’s trademark so as to intentionally attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent’s choice of the disputed domain name was not accidental and was clearly been made to derive unfair monetary advantage.

In support of the aforesaid submission, the Complainant relies on the fact that at the time of the registration of the disputed domain name by the Respondent on January 21, 2010, the GOOGLE mark was well-known and “google” domain names were registered in numerous jurisdictions across the world. The adoption of an identical mark or domain name by the Respondent was an act of bad faith. The word GOOGLE is a unique and coined word, which is exclusively referable to the Complainant and the suite of services provided by the Complainant. Thus, the Respondent’s use of the confusingly similar disputed domain name must have been deliberate so as to align its business interests and services with that of the Complainant. The Complainant also contends that the Respondent’s website does not have any active content and was registered with an intention to benefit from the sale of a famous domain name and to block the registration of the disputed domain name. The website contains only “sponsored listings” and the Respondent has no legitimate business interest in registering the disputed domain name. The sole purpose of registering the disputed domain name was to derive illegal profits by offering the disputed domain name for sale.

The Complainant therefore argues that based on the foregoing the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant’s GOOGLE mark is a famous and well-known trademark and one in which the Complainant has rights.

The Panel also accepts that the disputed domain name is confusingly similar to the Complainant’s GOOGLE mark as well as the <google.com> domain name registered by the Complainant.

The disputed domain name includes the well-known GOOGLE mark in its entirety. It also includes and incorporate the common term “hire”.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The GOOGLE mark is instantly recognizable as the dominant or principal component of the disputed domain name. The Panel accepts the evidence of the Complainant that the word or mark GOOGLE is a coined or invented word and has in addition acquired widespread fame and reputation as a result of the Complainant’s well-known operations as a search engine and provider of other Internet related applications and tools.

The addition of the descriptive word “hire” in the disputed domain name, <googlehire.com>, does not prevent the disputed domain name from being regarded as confusingly similar to the GOOGLE trademark. (see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, “automotive” did not distinguish the respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety. See also Apple Inc. v. Algernon Salois, WIPO Case No. D2011-0413, where the panel held that the addition of the generic term, “downloads” did not distinguish the respondent’s domain name <apple-downloads.com> from the complainant’s mark, as the domain name contained the complainant’s APPLE mark in its entirety.)

Neither would the presence of the top-level suffix “.com” be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration.

In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The evidence is that the Respondent registered the disputed domain name in early 2010 which was long after the Complainant began using its well-known GOOGLE mark in the Internet and had its trademarks registered around the world.

There is no evidence that the Respondent was using the disputed domain name prior to notice of this dispute in connection with a bona fide offering of goods or services.

There is also no evidence that the Respondent is or has been commonly known by the disputed domain name or that the disputed domain name is in any other way identified with or related to any rights or legitimate interests of the Respondent.

On the evidence, the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.

The Panel accepts the Complainant’s contentions that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not carrying out any activities from his website, which only displays "sponsored listings" but does not have any substantive content.

The Panel accepts that the use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.

The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and used in bad faith.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.

The Respondent registered the disputed domain name some years after the Complainant’s mark was in use and became well-known. The Panel finds that the GOOGLE trademark was and is a well-known mark based on the evidence adduced by the Complainant, which the Panel accepts, and especially absent any response or evidence to the contrary, the Panel finds that the Respondent must have known about the Complainant’s mark and business when registering the disputed domain name. It is highly improbable that given the reputation and fame of the GOOGLE trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name. The Respondent’s choice of the disputed domain name which was so similar to the Complainant’s mark could not, as the Complainant argues, have been accidental but was clearly made to derive unfair monetary advantage. The Panel accepts the evidence of the Complainant that the Respondent’s website contains "sponsored listings" from which the Respondent would derive revenue.

Accordingly, absent any Response from the Respondent, the Panel accepts the evidence offered by the Complainant that the Respondent registered the disputed domain name which was deceptively and confusingly similar to the Complainant’s trademark so as to intentionally attract for commercial gain Internet users to the web site, by intentionally misleading them and creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the website. Such acts constitute bad faith registration and use.

The Panel also notes that, as found by other panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562.

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <googlehire.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: August 11, 2011