WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Ganjineh Ofogh Omid Gostar Laleh Eshragh, Ltd.
Case No. DIR2014-0003
1. The Parties
Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates, India.
Respondent is Ganjineh Ofogh Omid Gostar Laleh Eshragh, Ltd. of Qom, Islamic Republic of Iran, represented by Shiva Hakimshafaei, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <google.co.ir> (the "Domain Name") is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014. On April 11, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On April 12, 2014, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on April 25, 2014.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2014. On May 17, 2014 the Center received a communication from Respondent requesting the extension of the Response due date. On May 19, 2014 the Center requested Complainant to provide its comments regarding the requested extension. On May 20, 2014 Complainant consented to the extension of the Response due date. On May 20, 2014, the Center formally notified the extension of the due date for Respondent to file a Response. The new Response due date was June 2, 2014. Respondent filed the Response on June 1, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on June 11, 2014. 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
According to Whois.nic.ir, the Domain Name was registered on November 12, 2011.
5. Parties' Contentions
Complainant states that it is a Delaware corporation located in California and that its business under the name "Google" was founded in 1997. Complainant has grown to become a multi-billion dollar business using its primary website at "www.google.com", which was registered on September 15, 1997. Complainant asserts that it is widely recognized as the world's most popular search engine and its GOOGLE trade mark (the "GOOGLE trade mark") is one of the world's most recognizable brands.
Complainant explains that its search technology can be accessed from desktop PCs, from most mobiles and wireless platforms and that users of the Google search technology can check stock quotes, obtain maps, check news headlines; look up phonebook listings; search billions of images and search the world's largest archive of Usenet messages numbering to more than 1 billion posts; dating back to the year 1981.
Complainant states as well as searching, it also offers a wide range of other products and services including its "Google Earth" service that lets people map out their localities with street names and landmarks creating an online map.
Complainant contends that it has consistently been honored for its technology and its services, and has received numerous industry awards dating from 1998. The GOOGLE trade mark identifies Complainant's award-winning, proprietary and unique search services, search engine technology, and associated products and services. The GOOGLE trade mark has been widely promoted among members of the general consuming public since 1997, and exclusively identifies Complainant. As a result, Complainant submits that its GOOGLE trade mark and the goodwill associated with it are property rights of incalculable value and that due to widespread and substantial international use, this mark has become famous.
Complainant states that it owns numerous registrations for the GOOGLE trade mark, including in the Islamic Republic of Iran, USA, India, United Kingdom of Great Britain and Northern Ireland, Australia, Argentina, Benelux, Brazil, Canada, Chile, China, Republic of Korea, Mexico, Norway, Poland, Singapore and many other countries around the world (the "Registrations"). In the Islamic Republic of Iran, its GOOGLE trade mark was registered on September 28, 2005.
Complainant states that its partners and customers include major companies like AOL, Nokia, Viacom, Disney, Samsung, BBC, and LG, and it also interacts with thousands of advertisers worldwide from small traders to large corporations. Complainant also partners with thousands of websites that participate in its Google Network.
The product and services of Complainant reach more than 150 countries worldwide and Complainant states that it has offices around the world offering products and services in more than 100 languages, and employing over 47,000 employees worldwide.
Complainant states that its revenue for 2013 was USD 59.82 billion.
Complainant asserts that the Domain Name resolves to Respondent's website which incorporates Complainant's GOOGLE trade mark in its domain name. Further, Complainant states that Respondent's effort to create a false association with Complainant is readily apparent when upon visiting its website as the webpage displays the Complainant's logo in an identical stylized font in a blue colour.
Further, Complainant submits, the addition of the second-level domain ".co.ir" does not add to distinctiveness of the Domain Name and the mark GOOGLE is the most prominent element on the webpage which is identical to its GOOGLE trade mark.
Complainant considers that use and registration of the Domain Name by Respondent conveys a false impression to Internet users that they are likely to find local content created by Complainant and alleges that the purpose of Respondent is to divert Internet traffic riding on the reputation and goodwill of the GOOGLE trade mark. Complainant also alleges that the Domain Name has been registered in bad faith with an intention to derive unfair monetary gain from the notification on the Domain Name website that "This site and domain are awarded to the highest bidder".
Complainant asserts that the Domain Name comprises an exact reproduction of its GOOGLE trade mark, with the addition of the second level domain suffix ".co.ir" making it identical to Complainant's marks and domain names in which it has rights, and it would lead others to think that the Domain Name is an official website of Complainant in the Islamic Republic of Iran or that the Respondent is associated with Complainant. The registration and use of the Domain Name will cause confusion and deception and also suggests that the Domain Name refers to a commercial activity which Complainant is directly involved in. Complainant further submits that it has not licensed or otherwise permitted Respondent to use the GOOGLE trade mark, or any other trade mark and/or apply for use or use any Domain Name consisting/incorporating the GOOGLE trade mark.
Complainant claims that many Internet consumers had become confused on seeing Respondent's website and had posted news articles expressing concerns over the content of the website. The visitors to Respondent's website assumed that Google's official website was hosted on the Domain Name, which had also been hacked. Further, a video was posted on YouTube bearing headline "Google.co.ir got hacked on 5/3/2012 (Google Iran got hacked)". Internet users would reasonably expect to find a Google domain to be owned and hosted by Complainant, therefore Complainant argues that because the Domain Name is identical to its mark it is bound to cause confusion.
Complainant submits that when Respondent registered the Domain Name in 2011, it was aware of Complainant's activities, its trade marks and its domain names using the GOOGLE trade mark.
Complainant goes on to assert that there is no legitimate reason for Respondent to have adopted the Domain Name with "Google" in the Domain Name as it is not a natural word nor a common name, nor one which is a common or natural descriptor for the use which is being made of the Domain Name. Respondent's purpose in selecting the Domain Name was, Complainant contends, to use the fame of Complainant's GOOGLE trade mark to generate web-traffic and to confuse internet users visiting Respondent's site when looking for Complainant and its services.
Upon viewing the home page of the Domain Name, it is submitted that Respondent is making no active use of the website other than offering it for sale to the potential highest bidder.
Respondent denies the allegation that the similarity between the mark GOOGLE and the Domain Name is confusing and states that Internet users would not imagine <google.co.ir> as an official website of the Google Company because the mark and the Domain Name are not the same; there are many differences between the web sites and the Google Company and its activities are well known and there are differences between Respondent's activities and Google.
Respondent asserts that the well-known trade mark which is registered in the Islamic Republic of Iran is "Google" whilst the Domain Name is made up of three different elements including "Google.co.ir". Therefore if the Internet user only types the word "Google" he/she wouldn't be directed to "www.google.co.ir" and he/she must necessarily type the Domain Name in full.
Respondent points out that there are many differences between two websites; with Complainant's website appearing in four different colors which is one of the site's important distinctiveness. Even when there is a special occasion like Christmas, winter Olympics, etc. there are changes in the shapes and animations surrounding the word Google, but the colors of the word Google remain unchanged. But in the case of the Domain Name the color is different as it is only sky blue in colour. In addition, only the main page of the website has been constructed, is in the Persian language, and there was always a sign of "khalije zibaye fars" (The beautiful Persian Gulf) under it just as clear as the abstract name of Respondent: Ganjine Ofogh Omid Gostar Laleh Eshragh.
Respondent points out that everyone knows and uses the wide services of Google Inc. but Respondent's field is distinctly different which is described in the official advertisement establishment by the company published in the official newspaper of the Islamic Republic of Iran. Respondent's field is supplying, distributing and selling computer hardware, importing and exporting goods, holding exhibitions, concluding contracts, obtaining and granting agencies, etc.
Respondent claims that the word "Google" used in its Domain Name is made up of the first letters of the words forming the name of its Company "Ganjine Ofogh Omid Gostar Laleh Eshragh", and further claims that it was obliged to make the company's domain name according to its name according to the internal regulations in the Islamic Republic of Iran. It further advises that legally it could choose the whole name of the company or a part of it or a word made up of the first letters of the name. Choosing the domain name was not planned by Respondent but it happened just as a result of the rules of NIC (registrar office).
Respondent further states that choosing a name for a company in the Republic of Iran has many restrictions and regulations, and that the name of a company should be more than three words to avoid similarities between names of other registered companies, which means that in Iran it is normal to choose long names for the companies to differentiate between names of other registered companies.
Respondent advises that the website has not been completed because of its internal and financial problems and it has only uploaded the main page in order to use the Domain Name. There are no advertisements on the page nor has there been any endeavor to attract visitors to the website to increase income. Respondent denies that it has ever offered the Domain Name for sale, although it claims that it has received many offers to buy the Domain Name.
Respondent further denies that it has acted against the interests of Complainant and contends that the website was not offering services the same as Google's, and because the Domain Name has not been created or developed completely it could not have received many visitors, which, it submits, means that there has been no commercial gain for Respondent.
Respondent notes the claim by Complainant that its consumers thought that Google's website was hacked because of the similarities, but denies any responsibility. Respondent further denies the allegation that its company's name is not natural.
Respondent denies that it intended to sell the website and explains that according to the regulations in the Islamic Republic of Iran a company may not transfer or assign its domain name and website alone without the company itself. But the company may be transferred alone without the domain name. Respondent contends that it posted the notice on the website advising clients of the possible assignment of the Domain Name as an external offer. Respondent objects to the use of the word "sell" as its offer was not an offer of sale but was an offer of assignment of the company as a whole.
Respondent advises that it has received many offers proposing high prices for the purchase of its Domain Name, but claims that as it was not looking to sell the Domain Name on its own it has ignored the offers. Respondent believes that this demonstrates that it did not register the Domain Name in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant was founded in 1997 and has since then registered or applied for and used the name "Google". It has grown to become a multi-billion dollar business using its primary website at "www.google.com". Complainant asserts that it is widely recognized as the world's most popular search engine and its GOOGLE trade mark is one of the world's most recognizable brands.
None of this is or could be in serious dispute. However, Respondent disputes the suggestion that the GOOGLE trade mark and the Domain Name is confusing and that Internet users would not imagine "google.co.ir" as an official website of the Google Company because the GOOGLE trade mark and the Domain Name are not the same. In particular, Respondent asserts that there are many differences between the web sites and the Google Company. Respondent further asserts that while Google might be well known in the Islamic Republic of Iran the Domain Name is made up of three different elements including "Google.co.ir" and that as a result Internet users would not confuse the two entities.
The Panel rejects this argument. Given the ubiquity and fame of Complainant and the huge reputation of the GOOGLE trade mark and the complete identity between the GOOGLE trade mark and the Domain Name, other than in relation to the descriptive elements ".co.ir" the GOOGLE trade mark and the Domain Namely are identical; or certainly confusingly similar.
Thus, in this Panel's view, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
In terms of assessing whether Respondent has rights or legitimate interests in the Domain Name it is necessary to examine its justification for registering and using the Domain Name. Respondent alleges that the word Google used in its Domain Name is made up of the first letters of the words forming the name of its Company "Ganjine Ofogh Omid Gostar Laleh Eshragh".
Further, it asserts that it is required to adopt a domain name which accords with its company name pursuant to internal government regulations in the Islamic Republic of Iran. Further assertions are made but essentially they support the above two propositions.
In Museum of New Zealand Te Papa Tongarewa v. Greg Nicolas, WIPO Case No. D2004-0288, the panel dealt with a situation similar to this. The dispute in that the case was over the name of the national museum of New Zealand - Te Papa, which was a matter of considerable publicity throughout the country. The panel rejected the respondent's contention in that case that the domain name had been registered to create a website extolling the beauties and advantages of the many places the respondent had visited and more generally of New Zealand, the panel finding that:
"The Exciting People and Places Around," the full name for the initials, does not immediately call to mind a website where Filipino migrant workers would find either inspiration as to other places where they might live or solace from their current adversities."
As a result, the panel concluded that the inference could be drawn that the name, "The Exciting People and Places Around," was one concocted to give legitimacy to the disputed domain name.
In the present case, Respondent has endeavoured to explain its choice of domain name, namely "Ganjine Ofogh Omid Gostar Laleh Eshragh". Regrettably, while the Panel does not speak Farsi or Persian, Respondent converses adequately at least in written form, in English. Notwithstanding this, Respondent has chosen to not share the meaning of this name with the Panel, unlike with the phrase "khalije zibaye fars" (The beautiful Persian Gulf). In the absence of any suitable explanation the inference is drawn by the Panel that the name "Ganjine Ofogh Omid Gostar Laleh Eshragh", is a concoction designed to give legitimacy to the choice of the Domain Name.
This is inconsistent with having any rights or legitimate interests. On this basis and under the circumstances, the Panel finds that the ground under the second element of the Policy is made out.
C. Registered and Used in Bad Faith
A finding of bad faith may be made whether the Respondent knew or ought to have known of the registration and use of the trade mark prior to registering the Domain Name. The Panel considers that it is most unlikely that Respondent did not know of Complainant and the GOOGLE trade mark when he registered the Domain Name.
Given the findings above that the Domain Name is identical or confusingly similar to the GOOGLE trade mark; and given the Panel's findings that the Respondent chose the Domain Name because of the reputation of complainant and concocted a name to try and justify its actions, and finally drawing the inference that Respondent had the requisite knowledge, the Panel has little difficulty in finding that the Domain Name was registered and used in bad faith.
Therefore, the Panel finds that Complainant has satisfied the third element of the Policy.
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 <google.co.ir> be transferred to Complainant.
Clive L Elliott QC
Date: June 23, 2014