The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Oneandone Private Registration of Chesterbrook, Pennsylvania, United States of America and Thuy Nguyen of Maribyrnong, Australia (Collectively “Respondent”).
The disputed domain name is <quangcaogoogleadwords.com> and is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2009. On December 9, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On December 11, 2009, 1&1 Internet AG transmitted by email to the Center its verification 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 the Complainant on December 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant chose not to amend the Complaint.
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 December 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2010. On December 16, 2009, December 23, 2009 and January 10, 2010, the Center received informal e-mail communications from the underlying registrant disclosed by the Registrar Mr. Nguyen Hoang.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 20, 2010. 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.
Due to unanticipated exceptional circumstances, the Panel extended the due date for submission of the Decision to the Center to February 10, 2010.
The Complainant, Google Inc., is a North American corporation recognized for its business concerning Internet search, e-mail, online mapping, office productivity, social networking and video sharing services. Its primary website was registered in 1997. In 2006, the verb “to google” was added to the Merriam Webster Collegiate Dictionary and to the Oxford English Dictionary, meaning “to use the Google search engine to obtain information on the internet”. The Complainant's Google Network, which includes several websites of its property, reaches more than 80 percent of Internet users in the world.
The Complainant's founders, Larry Page and Sergey Brin, invented and adopted the name and mark GOOGLE in 1997. The Complainant has obtained trademark registrations for its mark GOOGLE around the world. The expression “Google Adwords” identifies the Complainant's online advertising service and was also registered by the Complainant as a trademark in many countries.
The disputed domain name was created on February 11, 2009. At some time during or after November 2009 the Respondent became the registrant of the disputed domain name.
Before that, the domain name was registered by VietProtocol Corporation, which displayed a webpage at the disputed domain name that included reproductions of the Complainant's trademarks GOOGLE and GOOGLE ADWORDS.
The Complainant sent Cease and Desist letters to VietProtocol Corporation, asking them to stop using the Complainant's trademarks and to transfer the ownership of the disputed domain name. VietProtocol answered agreeing to cease the use of Google's logos but refusing to transfer the domain name because the company was seeking to become a Google Adwords Professional”. The Complainant denies this contention.
The Panel accessed the webpage placed at the disputed domain name on January 29, 2010. At that time, the page has been changed and was entitled “A not-for-profit project for saving papers for children.” The webpage stated that the last update was made on December 9, 2009.
As mentioned above, in the present case the Registrar asserted that the disputed domain name was registered under a privacy service and that the proper registrant name was Mr. Nguyen Hoang. The Center invited the Complainant to amend the Complaint to at least add the newly disclosed registrant information, but the Complainant chose not to amend the Complaint.
The WhoIs information collected and provided by the Complainant at the time the Complaint was filed shows that the Respondent was Oneandone Private Registration. Although, when the proceedings were formally commenced and the Complaint was notified to the parties by the Provider – and also at the time of writing this decision – the registrant details provided by the Registrar and available from the publicly accessible WhoIs service listed Mr. Nguyen Hoang as the registrant of the disputed domain name.
In this case, the Panel considers that the Complainant's choice not to amend its Complaint (not including Mr. Nguyen Hoang as a formal Respondent or substituting Oneandone) does not affect the administrative validity of the proceedings.
The Panel understands that – in situations like this one – it is up to the Complainant to decide to keep as the Respondent only the one listed in the WhoIs database at the time the Complaint was filed or to make any additions or substitutions.
This is particularly true when the circumstances of the case indicate that the privacy registration was probably used to raise difficulties to the enforcement of the Complainant's trademark rights and when the Complainant has sent cease and desist letters to the previous owner of the disputed domain name just before the privacy registration took place.
A registrant that chooses to register a domain name through a privacy service and the registrar that provides such anonymous registration must also bear the consequences. As stated in a former WIPO UDRP decision, “If ‘PrivacyProtect.org' wished to disassociate itself from the registration of this domain name it should have done so earlier” (F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854).
The Center forwarded a copy of the Complaint to both the named Respondent and to Mr. Nguyen Hoang. The Panel agrees with this policy, in light of the provisions of paragraph 2(a) of the Rules and in aiming to most effectively provide notice of the case, Only Mr. Nguyen Hoang replied (informally) by email.
Therefore, although the Panel recognizes the perfect regularity of the present proceedings, keeping only Oneandone as the formal Respondent in the Complaint, the Panel will treat both Oneandone and Thuy Nguyen as the Respondent and the arguments presented by Mr. Nguyen Hoang will be considered below.
The Complainant makes the following contentions:
(i) The Complainant's business under the mark GOOGLE was founded in 1997 and had a sudden vertiginous growth to become a multi-billion dollar company. Its primary website “www.google.com” is one of the most used search engines in the world. In addition to that, the Complainant has lots of partners that compose the Google Network which provide products and services that reach more than 150 countries. The Complainant has obtained trademark registrations for its mark GOOGLE worldwide and is the owner of several other domain names composed of the expression “google”.
(ii) The website previously hosted at the disputed domain name was used to offer services to help register advertising keywords with the Complainant. The website reproduced without authorization the Complainant's logos and trademarks. The Complainant has exhausted all efforts to amicably solve the matter without success.
(iii) The disputed domain name is confusingly similar to the Complainant's trademark, because it is constituted by exactly the same expressions google and adwords (registered by the Complainant as trademarks) and the expression “quang cao” (which means “advertising” in Vietnamese).
(iv) The Respondent has no rights or legitimate interests in respect of the disputed domain name. That is because the GOOGLE and ADWORDS marks are so well-known around the world that there is no credible legitimate reason for the Respondent to register that domain name. Furthermore, the Respondent's purpose in registering the disputed domain name was to use the notoriety of the GOOGLE mark to generate web traffic and to confuse Internet users. The Complainant has not licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. The Respondent is not commonly known by a name or nickname relating to the GOOGLE or ADWORDS marks.
(v) The Respondent has registered and is using the disputed domain name in bad faith. The fame and unique qualities of the GOOGLE mark make it hard to believe that the Respondent had created the domain name independently. In addition, the Respondent's choice of the word “quang cao” to compose the domain name in conjunction with the Complainant`s trademarks GOOGLE and ADWORDS was made to convey to Internet users that the corresponding website was part of the Complainant's business. Finally, the Registrant has refused to comply with the Complainant's demands regarding the transfer of the domain name, showing unwillingness to resolve the matter amicably – which also demonstrates bad faith.
The Respondent did not reply to the Complainant's contentions.
Mr. Nguyen Hoang sent an informal response, arguing the following:
(i) He is a “quite new owner” of the disputed domain name, which was bought a couple of months before January, 2010;
(ii) The domain name is not being used in bad faith and does not mislead the Complainant's clients;
(iii) The whole word “quangcaogoogleadwords” is the name of a non-profit project devoted to “save papers for children, focusing on Vatican and Montenegro”;
(iv) He could not find any evidence that the word “quang cao” means “advertising” or “marketing”;
(v) The Complainant is trying to commit reverse domain name hijacking.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Annex 6 to the Complaint demonstrates registrations of the GOOGLE trademark in the United States of America since 1997.
Furthermore, the Complainant annexed lists of trademark registrations and/or applications including the GOOGLE (Annex 6) and ADWORDS (Annex 10) marks in several countries.
The Panel has no doubt that GOOGLE and ADWORDS are trademarks directly connected with the Complainant's activities. The Panel also recognizes that the GOOGLE trademark has reached a well-known status all over the world.
The trademarks GOOGLE and ADWORDS are wholly encompassed within the disputed domain name, which also includes the expression “quang cao”. According to “www.Vdict.com”1, an online dictionary (Vietnamese - English), “quảng cáo” means “to advertise, to publicize”. Consequently, the Panel concludes that the addition of the expression “quang cao” is not sufficient to dispel the confusing similarity between the disputed domain name and the Complainant's trademark, required under paragraph 4(a)(i) of the Policy.
In a previous WIPO UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
The Complainant filed screenshots of the former webpage published at the disputed domain name showing reproductions of some Google's logos and trademark. The Complainant has not authorized such reproductions, which were later excluded from the website.
The former owner of the domain name (VietProtocol) justified the operation of the website and the registration of the domain name containing the Complainant's trademarks GOOGLE and ADWORDS (together with an expression that means “advertise” in English) indicating that they were seeking to become a “Google Adwords Professional”.
Nevertheless, the Complainant denies this contention and has not licensed its trademarks to the former owner of the domain name or to the present Respondent. Neither the “Google Advertising Professional Program Rules of Use” nor the “Google Advertising Professional Program” 2 grants the participants any right to register the Complainant`s trademarks as part of domain names.
A previous WIPO UDRP case has already pointed that “even if Respondent is a retail seller of Complainant's products, the collateral trademark use necessary to allow resell of Complainant's products is not enough to give Respondent proprietary rights in Complainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer's trademarks.” (The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113). Likewise, the former use of the disputed domain name (even if it were somehow linked to the current Respondent in this case) cannot be understood to be fair or in connection with a bona fide offering of goods or services.
After receiving cease and desist letters from the Complainant, VietProtocol transferred the disputed domain name to a privacy registration service. Nowadays, the website hosted at the <quangcaogoogleadwords.com> domain name consists of a single page referring to “a not-for-profit project for saving papers for children”, “intended for users in Vatican only”. This is also what was stated by Mr. Nguyen Hoang in his communications to the Center.
However, there is no circumstantial evidence that could support these allegations. The Panel also could not find any other reference to such project – supposedly called “Quangcaogoogleadwords” – on the Internet.
Additionally, why would a project with these characteristics justifiably include in its name the trademarks GOOGLE and ADWORDS? Neither the Respondent nor Mr. Nguyen Hoang has stated that it is commonly known by any of the words that compose the disputed domain name.
Therefore, the Panel concludes that the present webpage and the arguments presented by Mr. Nguyen Hoang were intentionally created to characterize a domain name use in accordance with paragraph 4(c)(iii) of the Policy. However, the Panel was not convinced that this kind of legitimate noncommercial or fair use has really happened in the present case.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The registration of the disputed domain name occurred in 2009, when the Complainant's trademark GOOGLE was already well-known around the world and the Complainant's service “Google Adwords” had already become very popular. Therefore, it is not feasible that the Respondent could ignore the Complainant's reputation and business when it registered the disputed domain name.
Moreover, the former use of the domain name to publish a page where there were reproductions of the Complainant's logos and trademarks makes clear that the choice of the words “google” and “adwords” to compose the disputed domain name was not a coincidence.
The Panel is convinced that the addition of the expression “quang cao” (“to advertise”) to the trademarks GOOGLE and ADWORDS was intentionally done in order to convince consumers that the website was related to the Complainant's own business, creating a likelihood of confusion as to the source of the services offered under the disputed domain name. This clearly constitutes bad faith in the view of this Panel.
The transfer of ownership of the disputed domain name just after receiving the Complainant's cease and desist letters and the registration of the domain name under a privacy registration services also indicated bad faith registration in the present case.
Finally, the arguments that such composition of (a) a word that means “to advertise” (“quang cao”) with (b) a worldwide well-known trademark (GOOGLE) and (c) a very popular advertising service (ADWORDS) would coincidently constitute the name of a nonprofit project (“Quangcaogoogleadwords”) devoted to save papers for children in Vatican does not look to be feasible at all and is not supported by any circumstantial evidence.
Accordingly, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <quangcaogoogleadwords.com> be transferred to the Complainant.
Dated: February 10, 2010