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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Yang HuaTing

Case No. DCC2010-0007

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 Yang HuaTing of Dongshi, Guangdong Province, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <googie.cc> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, Xin Net Technology Corp. 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 sent an email communication to the Complainant on October 29, 2010 regarding the Registrar and Mutual Jurisdiction. The Complainant filed an amendment to the Complaint on November 2, 2010. On October 29, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On November 1, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings specifically in the emails sent to the Center on November 3, 2010.

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 the Respondent of the Complaint, and the proceedings commenced on November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. On November 3, 4 and 11, 2010, the Center received a couple of emails from the Respondent, in which the Respondent asserted that “googie” is not identical to “google” as “i” would never be identical to “l”. He asserted that he has rights in the <googie.cc>.

On November 25, 2010, the Respondent sent an email communication to the Center reinstating his assertions in the previous emails sent to the Center.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on November 29, 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.

4. Factual Background

The Complainant registered its primary website “www.google.com” on September 15, 1997 and has been providing search engine service as well as a wide range of other products and services on the Internet. The Complainant owns numerous registrations for the mark GOOGLE in a number of jurisdictions, including China.

The Respondent registered the disputed domain name <googie.cc> on December 9, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <googie.cc> is confusingly similar to the mark GOOGLE, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.

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

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant requests that the disputed domain name <googie.cc> be transferred to it.

B. Respondent

The Respondent did not submit a Response according to paragraph 5 of the Rules. Instead, the Respondent, via the emails sent to the Center on November 3, 4 and 11, 2010, asserted that “googie” is not identical to “google” as “i” would never be identical to “l”. The Respondent asserted that he has rights in the <googie.cc>.

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreement for the disputed domain name <googie.cc>, as confirmed by the concerned Registrar, is Chinese.

The Complainant requests that the language of proceedings be English. The Complainant presents that the disputed domain name was registered under “.cc”, which is the top-level domain for Cocos Island, where the official language is English. The Complainant also asserts that Chinese people, as a whole, may generally be familiar with English.

The Respondent did not comment on the language of proceedings specifically in the English-Chinese bilingual emails sent to the Center after receiving Center’s notification in both Chinese and English regarding the language of proceedings.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of 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 Panel holds that each Party be given a fair opportunity to present its case as prescribed in the Rules, paragraph 10(b). Since the Respondent communicated with the Center via English-Chinese bilingual emails on November 3, 4 and 11, 2010 but did not dispute adopting English as the language of proceedings, the Panel finds that the Respondent has the capacity to present the case in English and determines under the Rules, paragraph 11(a) that English shall be the language of proceedings.

B. Expiry Date of the Disputed Domain Name

As confirmed by the concerned Registrar, the registration of the disputed domain name <googie.cc> shall expire on December 9, 2010. The Panel, however, shall render the decision by December 13, 2010.

According the ICANN Expired Domain Deletion Policy, in the event that a domain name which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the domain name will be placed in Registrar LOCK status, and that the domain name will remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded.

The concerned Registrar confirmed to the Center on November 26, 2010 that it has, in consistence with the ICANN Expired Domain Deletion Policy, put the disputed domain name <googie.cc> on Registrar Lock.

Therefore, the expiry date of the disputed domain name should have no impact on the normal proceeding of the case and the decision by the Panel.

C. Respondent’s Response and Supplemental Filing

The Center notified that except for the Respondent’s emails received on November 3, 4 and 11, 2010, no formal Response was filed by the Respondent.

The Panel, although notes that a Response should comply the form specified by the Rules and Supplemental Rules, agrees to consider the assertions made in the Respondent’s emails on November 3, 4 and 11, 2010 to ensure that each Party is given a fair opportunity to present its case as prescribed by paragraph 10 of the Rules.

However, the Panel does not accept the Respondent’s email communication to the Center on November 25, 2010, which is obviously after November 24, 2010, when was the due date of the Response specified by the Center. According to the Rules, paragraph 10 (c), the Panel shall ensure that the administrative proceeding takes place with due expedition. The Panel therefore decides that the Respondent’s supplementary submission made after November 24, 2010 not be considered.

D. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.

The Panel finds that before the registration of the disputed domain name the Complainant’s trademark GOOGLE had been registered and used in a number of countries.

The disputed domain name is <googie.cc>. Apart from the top-level domain suffix “.cc”, the disputed domain name consists of “googie”. Although letter “i” is not identical to the letter “l”, the disputed domain name “googie”, as a whole, is visibly confusingly similar to the Complainant’s trademark GOOGLE. In addition, given that the Respondent uses the disputed domain name for the Internet services identical to the Complainant’s, the disputed domain name is even more likely to be confused with GOOGLE.

The Panel therefore finds that the Complainant has proven the first element required by paragraph 4(a) of the Policy.

E. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, asserted that he has rights in the <googie.cc>.

Through examining and assessing the submissions of both Parties, the Panel finds that the Respondent’s mere assertion that the disputed domain name is not confusingly similar to the Complainant’s trademark cannot prove that the Respondent does have any right or legitimate interest in the disputed domain name. The Respondent’s repetition that the letter “i” is not letter “l” so as to repudiate the likelihood of confusing similarity between “googie” and “google” is more rhetorical than convincing.

Since the Complaint shows that there is no connection between the Respondent and the Complainant or its business, the Panel, also in light of the findings below, finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

F. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond to such claim.

Through examining the evidence that was submitted by the Complainant and not disputed by the Respondent, the Panel notes the facts that the website set up at the disputed domain name <googie.cc> prominently copycats the layout design of the Complainant’s website “www.google.com” in Chinese. Particularly, the website at the disputed domain name displays the logos “Googie” and “谷鸽”. Apart from “Googie”, “谷鸽” is visually similar to and phonetically identical with the Complainant’s trademark in Chinese 谷歌.

Since the disputed domain name <googie.cc> was registered and is fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The use of a disputed domain name that is confusingly similar to the Complainant’s GOOGLE mark to attract consumers to a website that is offering the services that identical with the Complainant’s and marked with the confusingly similar logos is highly likely to cause confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the services on the website. The Panel, therefore, finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith prescribed under the Policy, paragraph 4(b)(iv).

Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) 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, <googie.cc>, be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Dated: December 13, 2010

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