WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Shahzad Ali

Case No. D2013-1115

1. The Parties

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

The Respondent is Shahzad Ali of Lahore, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <pakistanadsense.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 20, 2013, the Registrar 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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2013. The Respondent sent an email communication to the Center on June 27, 2013 but did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on July 16, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 29, 2013. 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 corporation registered in Delaware, United States and located in California, United States. It is a provider of Internet search and related services, including an advertising placement service named “AdSense”.

The Complainant is the owner of numerous registrations for the trademark ADSENSE throughout the world.

The Domain Name was created on August 19, 2010, and registered to the Respondent on October 7, 2012.

At the date of the Center’s formal compliance review, June 25, 2013, the Domain Name resolved to a website at “www.pakistanadsense.com” which appeared to offer advertising, web hosting and related services.

5. Parties’ Contentions

A. Complainant

The Complainant submits evidence of over 150 trademark registrations for the mark ADSENSE in territories throughout the world. These include Pakistan trademark number 211115 for ADSENSE, registered on June 30, 2005 in International Class 35.

The Complainant states that it commenced its “AdSense” business in 2003. The service allows a website owner to generate revenue by including third-party advertising on their website or in conjunction with Internet search results. The Complainant states that over two million website owners have used its AdSense service and that it works with millions of advertisers worldwide who purchase online advertising through the service. The AdSense business generated over USD 7 billion of advertising revenue in 2012 alone.

The Complainant states that it is the owner of the domain names <googleadsense.com> and <adsense.com> among others. The latter domain name dates back to 1997 and is actively used to promote the Complainant’s “AdSense” business.

The Complainant submits that, by virtue of the above matters, it is the owner of significant reputation and goodwill attaching to its trademark ADSENSE throughout the world, including in Pakistan, and that the mark has the status of a well-known trademark.

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant states that the Domain Name incorporates its trademark ADSENSE in its entirety, with only the geographical term “Pakistan” added to it. The Complainant submits that the addition of this term does nothing to distinguish the Domain Name from the Complainant’s trademark and, on the contrary, is merely suggestive of the Complainant’s own services in Pakistan.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant states that it has never authorized the Respondent to use its trademark ADSENSE or to register any domain name incorporating that term. It further contends, on information and belief, that the Respondent has never been commonly known by the Domain Name. Nor is the Respondent making any legitimate noncommercial or fair use of the Domain Name, as it has clearly been registered for commercial purposes.

The Complainant submits evidence of the Respondent’s website at “www.pakistanadsense.com”. The website includes a prominent “Pakistan adsense” logo incorporating a globe device in blue, red, orange and yellow colours, which the Complainant contends calls to mind its own corporate iconography. The website includes prominent references to online advertising services including “Google Adsense” and “Google Adwords”. The website appears to offer services including advertising management and web hosting.

The Complainant submits that there can be no legitimate reason for the Respondent having chosen a domain name which incorporates the term “adsense”, which is a coined term and has no dictionary meaning. Given the well-known status of the Complainant’s trademark ADSENSE, of which the Respondent must have been aware, the only explanation for the Respondent’s choice of the Domain Name is to enable it to impersonate the Complainant.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant repeats that the mark ADSENSE is a coined term and asserts that the Respondent could not have happened upon that term coincidentally. The Complainant submits that it is impossible to conceive of any legitimate use to which the Respondent could put the Domain Name and that the Complainant’s ADSENSE mark is so well known that its use by someone with no connection with the name is in itself evidence of opportunistic bad faith (e.g. Parfums Christian Dior v. Javier Gacia Quintas, WIPO Case No. D2000-0226).

The Complainant submits that the Respondent can only have registered the Domain Name in order to create the misleading impression that the Domain Name, and the website to which it resolves, were connected with the Complainant and to seek a “free ride” on the Complainant’s reputation and goodwill. For the purposes of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract Internet users to the relevant website for commercial gain by creating a misleading impression of a connection with the Complainant.

The Complainant also submits that it attempted to contact the Respondent in both April and May 2013 with regard to the Domain Name but received no reply from the Respondent. The Complainant submits that this is further evidence of the Respondent’s bad faith.

The Complainant seeks a transfer of the Domain Name.

B. Respondent

The Respondent did not file a formal Response to the Complainant’s contentions. However, on June 27, 2013 the Respondent sent the Center an informal email which stated: “dear sir kindly tell me what can i do for this complaint.”

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish all three of the above matters.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of numerous registrations throughout the world for the trademark ADSENSE. Ignoring the generic Top Level Domain (gTLD) “.com”, the Domain Name consists of the term “adsense” prefixed by the term “pakistan”. The Panel agrees with the Complainant’s contentions that this descriptive geographical term does not serve to distinguish the Domain Name from the Complainant’s distinctive trademark and is liable, in fact, to be understood as a reference to the Complainant’s services in Pakistan.

Accordingly, the Complainant has established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in respect of the Domain Name and that, in particular, the Respondent is unable to establish any of the criteria set out under paragraph 4(c) of the Policy that may demonstrate such rights or legitimate interests.

While it was open to the Respondent to reply to the Complainant’s contentions, it has chosen not to do so and has not, therefore, put forward any evidence of rights or legitimate interests in the Domain Name. Nor is there any other evidence available to the Panel that the Respondent has any such rights or legitimate interests.

The Panel accepts the Complainant’s submission, which is not contradicted by the Respondent, that the Respondent has used the Domain Name for the purposes of a website which is likely to give a misleading impression of a connection between the Domain Name and the Complainant. Such use does not give rise to any rights or legitimate interests in the Domain Name on the part of the Respondent and is in fact an indication to the contrary.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submissions that the mark ADSENSE is both a well-known trademark and a coined term which has no meaning in commerce other than to refer to the Complainant’s “AdSense” business. The Respondent has declined to provide any explanation for its choice of the Domain Name and the Panel infers that the Respondent registered the Domain Name with the intention of taking advantage of the goodwill in the Complainant’s ADSENSE mark.

Under paragraph 4(b)(iv) of the Policy it shall be an indication of bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

The Panel accepts that the Respondent has used the Domain Name for the purposes of a commercial website that gives a misleading impression of a connection with the Complainant. This results not only from the nature of the Domain Name but also the appearance and content of the website itself. In the light of the circumstances set out above, the Panel finds that the Respondent has used the Domain Name in the manner contemplated by paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.

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 Domain Name <pakistanadsense.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 7, 2013