WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. xuyecheng

Case No. D2011-0557

1. The Parties

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

The Respondent is xuyecheng of Xiaogan, Hubei, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <googletg.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2011. On March 28, 2011, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On March 29, 2011, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 1, 2011, the Center sent an email communications to the parties in both Chinese and English regarding the language of the proceeding. On April 4, 2011, the Complainant requested English be the language of the proceeding. On April 6, 2011, the Respondent requested Chinese be the language of the proceeding.

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 April 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2011. The Center notified the Respondent’s default on April 28, 2011.

In the email of Notification of Complaint, the Center informed the parties of the following:

“The Complainant has submitted a request that English be the language of the proceedings. The Respondent has submitted a request that Chinese be the language of the proceedings.

Given the provided submissions and circumstances of this case, the Center has decided to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.”

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 9, 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, Google, Inc. is a company based in the United States, founded in 1997 and operates one of the world’s largest web search engine in its primary website "www.google.com". The Complainant also offers a wide range of other products and services and in many different languages.

The Complainant's products and services reach more than 150 countries worldwide, its website receives 581 million visitors per month, and it is the number one search engine in Argentina, Australia, Belgium, Brazil, Canada, Denmark, France, Germany, India, Italy, Mexico, Spain, Sweden, Switzerland, the United Kingdom of Great Britain and Northern Ireland, and the United States.

The Complainant is the owner of numerous trademark registrations, which consist of the mark GOOGLE, around the world. For example: United States trademark registration No. 2806075 – GOOGLE, with the registration date of January 20, 2004; United Kingdom trademark registration No.2410931 – GOOGLE, with the registration date of January 12, 2006; China trademark registration No. 5558973 – GOOGLE, with the filing date of December 7, 2009, and many more.

The Complainant also developed its presence on the Internet, and is the owner of domain names, which contain the mark GOOGLE. For example: <google.com>, <google.net>,<google.fr>, <google.org>, <google.biz> and many more.

The Complainant registered its primary website “www.google.com” on September 15, 1997, and is using its GOOGLE trademark ever since.

The disputed domain name was registered on January 21, 2011.

The disputed domain name resolves to an offline website which contains an error message.

The disputed domain name used to resolve to a website containing content from other websites offering third parties’ products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant argues that the GOOGLE mark has been widely promoted among the public and exclusively identifies the Complainant.

The Complainant further argues that the GOOGLE trademark has gained tremendous goodwill, among others, due to widespread and substantial international use, and has become a well-known trademark.

Complainant indicates that previous UDRP panels have established the Complainant’s long lasting rights in the GOOGLE trademark, and that it is widely known.

The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s trademark, as it wholly incorporates, as a dominant element, the Complainant’s registered trademark. The Complainant further contends that the mere addition of the letters “tg” do not eliminate the confusing similarity.

The Complainant further argues that the Complainant has not licensed or authorized the Respondent to use the disputed domain name or the Complainant’s trademark.

The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain name, and that the disputed domain name was registered to divert Internet traffic from the Complainant’s website for commercial gain. The Complainant supports its claims with the fact that the disputed domain name, <googletg.com>, is not a natural word, nor a common name, and nor is it a common or natural descriptor.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not commonly known by the disputed domain name.

The Complainant further argues that the Respondent has registered the disputer domain name in an attempt to 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 Complainant further argues that the Respondent registered the disputed domain name to derive unfair monetary advantage. The Complainant supports its contention with the fact that at the time of the registration of the disputed domain name, the Complainant’s unique coined GOOGLE trademark was declared as a famous trademark in China.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Respondent requested that Chinese be the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name consists of a worldwide well-known trademark, which is known to be associated with a United States company.

b) The disputed domain name comprises characters in the English language.

c) The Respondent while requesting that the language of the proceeding should be in Chinese noted clearly that the Respondent is familiar with the Complainant’s services.

Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of the proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations consisting of the mark GOOGLE. For example: United States trademark registration No. 2806075 – GOOGLE, with the registration date of January 20, 2004; United Kingdom trademark registration No.2410931 – GOOGLE, with the registration date of January 12, 2006; China trademark registration No. 5558973 – GOOGLE, with the filing date of December 7, 2009, and many more.

The disputed domain name <googletg.com> differs from the registered GOOGLE trademark by the additional letters “tg” and the additional gTLD suffix “.com”.

The addition of the suffix "tg" is insufficient to avoid confusing similarity as it is a non-distinctive element, which meaning is unclear. The suffix "tg" is potentially connected with the Complainant's market, as it could indicate the ccTLD for “Togo”.

The most prominent element in the disputed domain name is clearly the term “google”, which lacks dictionary meaning in Chinese, and may cause the public to view it as connected to the GOOGLE trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights.

C. Rights or Legitimate Interests

Once a complainant has established a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the responsibility of coming forward with evidence shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the GOOGLE trademark, or a variation thereof.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence that shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the GOOGLE trademark at least since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant had gained in its well-known GOOGLE trademark.

Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of bad faith registration and use by the respondent, if by using the domain name the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The Complainant provided evidence proving that the Respondent was using the Complainant’s trademark to promote third parties’ goods. Also, the Respondent acknowledged during the proceeding that it had knowledge of the Complainant. The Respondent while having knowledge of the Complainant intended to trade off its goodwill. The Respondent’s actions therefore constitute bad faith under the Policy. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the Respondent's use of the disputed domain name without rights or legitimate interests for promoting third parties’ goods constitutes bad faith on behalf of the Respondent.

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the confusing similarity between the disputed domain name and the Complainant's mark and the Respondent's admission that it is aware of the Complainant, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <googletg.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: May 23, 2011