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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Karol Wawrzak

Case No. DIE2015-0004

1. The Parties

The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Matheson., Ireland.

The Respondent is Karol Wawrzak of Killester, Co. Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <googleads.ie> is registered with IE Domain Registry Limited ("IEDR").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2015 via email and on April 9, 2015 via courier. On March 27, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On March 27, 2015, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 10, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was May 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2015.

The Center appointed James Bridgeman as the sole panelist in this matter on May 22, 2015. 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 the proprietor of a world famous Internet search engine and is the owner of a large portfolio of registered trademarks including the following which are relevant to this Complaint:

Community Trademark GOOGLE, filed on March 12, 1999;

Community figurative Trademark GOOGLE designated on January 12, 2006;

Community Trademark ADWORDS, filed on November 2, 2011.

These Community Trademarks are protected in the two legal jurisdictions on the island of Ireland.

The Complainant's primary website is "www.google.com" and is the owner of hundreds of additional domain names incorporating its GOOGLE trademark including <google.ie>.

The disputed domain name was registered on June 17, 2013.

In the absence of a response or other communication from the Respondent, there is very little information available about the Respondent except that he is the present registrant of the disputed domain name and has established a website to which the disputed domain name resolves which offers search engine optimization services.

5. Parties' Contentions

A. Complainant

The Complainant relies on its statutory and common law prior rights in the above-listed Community Trade Marks and in particular the GOOGLE trademark which it has used in commerce in association with its Internet search engine since 1997.

The Complainant submits that the disputed domain name is nearly identical or confusingly similar to the Complainant's GOOGLE trademark arguing that the disputed domain name incorporates the Complainant's trademark in its entirety with the mere addition of a generic element being the word "ads" which is a commonplace abbreviation for the word "advertisements".

The Complainant argues that its GOOGLE trademark is the dominant element of the disputed domain name and that the ".ie" country code Top-Level Domain ("ccTLD") extension should be ignored for the purposes of the comparison.

The Complainant further submits that the addition of the word "ads" does not serve in any way to distinguish the disputed domain name from the mark but in fact adds to the risk of confusion among Internet users because the Complainant has developed an extremely successful online advertising which it delivers in association with over 5,000 approved GOOGLE partners worldwide using the ADWORDS trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name; that the Complainant has never authorized or licensed the Respondent to use the disputed domain name nor is the Respondent affiliated with, associated with, or otherwise endorsed by the Complainant in any way; that the Respondent is offering search engine optimization services for a fee which amounts to a commercial use of the disputed domain name and that the disputed domain name was deliberately chosen to create a false association with the Complainant.

The Complainant alleges that the disputed domain name has been registered or is being used in bad faith.

Addressing the alleged bad faith registration, the Complainant submits that considering the world-wide fame of the Complainant and its trademark, and the fact that the Respondent's search-optimization business relies on the Respondent's search engine, it is inconceivable that the registrant of the disputed domain name was unaware of the Complainant and its rights in the GOOGLE mark when the disputed domain name was registered and registration in such circumstances amounts to bad faith. Citing Ferari S.p.A v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882: "The Panel finds it implausible that Registrant was unaware of Complainant's trademark".

Addressing the alleged bad faith use of the disputed domain name, the Complainant submits that the Respondent is using the disputed domain name, which is confusingly similar to the Complainant's GOOGLE trademark in such a manner as to capitalize on the fame of the trademark so as to divert consumers using the Internet seeking the Complainant's website.

The Complainant has provided evidence that the Respondent is using the Complainant's trademark on his website in such a manner as to give the impression that the website is established and maintained by the Complainant or one of its associated businesses known as GOOGLE Partners. The Complainant submits that such use of its trademark without permission is diluting the reputation of the Complainant's trademark by misleading Internet users.

Furthermore the Complainant submits that the Respondent has failed to respond to the cease and desist letter sent by the Complainant's representative on February 24, 2015 and that such failure is evidence of bad faith use. Citing Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.

B. Respondent

There was no response or other communication from the Respondent.

6. Discussion and Findings

Paragraph 1 of the IEDR Policy places on the Complainant the obligation to prove that:

1.1.1 the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and

1.1.2 the Respondent has no rights in law or legitimate interests in respect of the domain name; and

1.1.3 the domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has furnished evidence of its ownership of, rights in and extensive use of the above registered trademarks.

The disputed domain name is almost identical with, and is misleadingly similar to, the Complainant's famous GOOGLE trademark for which the Complainant owns the above-mentioned Community Trademark registrations which are protected in both jurisdictions on the island of Ireland. Paragraph 1.3.1 of the IEDR Policy provides inter alia that the concept "Protected Identifiers" for the purpose of the IEDR Policy includes trade and service marks protected in the island of Ireland.

The disputed domain name consists of the Complainant distinctive trademark GOOGLE in combination with the generic word "ads" and the ccTLD extension ".ie".

This Panel finds that the Complainant's GOOGLE trademark is the dominant element of the disputed domain name and that the addition of the generic word "ads" does not serve to distinguish the mark and the domain name in any significant way. Nor does the additional element reduce the risk that Internet users will be misled by the disputed domain name because of the likelihood that Internet users will associate the disputed domain name with the Complainant's well established Internet advertising business and its other trademark ADWORDS. It is well established that the ccTLD extension may be ignored for the purposes of comparing the mark and the disputed domain name.

This Panel finds therefore that Complainant has met the element of paragraph 1.1.1 of the IEDR Policy.

B. Rights in Law or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: the Complainant has an established and famous business using the GOOGLE trademark, the Respondent has not been licensed to register any domain name which incorporates the Complainant's GOOGLE mark, the Respondent has no association with the Complainant and the Respondent is not known by the disputed domain name.

It is well established that once a complainant makes out a prima facie case the burden of production shifts to the respondent to prove that it has such rights or legitimate interests.

On the evidence before this Panel the Respondent is using the disputed domain name for a commercial purpose offering search engine optimization services. The Respondent is entitled to offer such services and there may be circumstances in which he is entitled to refer to the Complainant's search engine and other search engines by name in offering and advertising such services, however in the present case he is offering these services using the disputed domain name which is misleadingly similar to the Complainant's trademark without the permission of the Complainant and furthermore he is using the Complainant's trademark without its permission on its website. In these circumstances this Panel finds that such misleading use of the disputed domain name and the GOOGLE mark does not constitute a bona fide commercial use such as to create rights in law or legitimate interests in the disputed domain name.

The Respondent has failed to submit any response, or to challenge the Complainant's submission in any way.

In the circumstances this Panel finds that the Respondent has failed to discharge the burden of production and the Complainant has satisfied the element of paragraph 1.1.2 of the IEDR Policy.

C. Registered or Used in Bad Faith

The Complainant's GOOGLE trademark is both very distinctive and famous. It is inconceivable that the registrant of the disputed domain name was not actually aware of the Complainant and its rights when the disputed domain name was registered.

The disputed domain name was registered long after the Complainant acquired its rights in the GOOGLE mark. This Panel finds that there is no plausible explanation for the choice of domain name except that the disputed domain name was knowingly chosen and registered in bad faith to take predatory advantage of the Complainant's goodwill in the GOOGLE and ADWORDS trademarks and Internet advertising business.

Since the disputed domain name was registered, as has been stated above, the Respondent has established a website to take predatory advantage of the Complainant's goodwill and reputation, without permission and in bad faith, and is using the disputed domain name in a manner intending to mislead Internet users into believing that there is some connection between the Respondent and the Complainant.

In the circumstances, this Panel finds that the disputed domain name has been registered and is being used in bad faith.

The Complainant has therefore satisfied the element of paragraph 1.1.3 of the IEDR Policy and is entitled to succeed in this Complaint.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <googleads.ie> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: May 25, 2015

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