WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google, Inc. v. Robert Takovich
Case No. DMX2012-0006
1. The Parties
Complainant is Google, Inc. of California, United States of America (“United States”), represented by Dickinson Wright, PLLC, United States.
Respondent is Robert Takovich of Columbia, Texas, United States.
2. The Domain Name and Registrar
The disputed domain names <gmail.com.mx> and <wwwgoogle.com.mx > are registered with NIC-Mexico.
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 22, 2012, email to NIC-Mexico a request for registrar verification in connection with the disputed domain names. On June 22, 2012, NIC-Mexico transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 9, 2012, the Center informed the parties that Art. 13 of the Reglamento de la política de solución de controversias en materia de nombres de dominio para .MX (“Rules”) requires that the proceeding be in Spanish, unless otherwise agreed by the parties and subject to the authority of the Administrative Panel. In this connection, the parties were informed that the Center would accept the Complaint filed in English, but all future communications related to the case would be transmitted in Spanish only.
The Center verified that the Complaint satisfied the formal requirements of the Política de solución de controversias en materia de nombres de dominio para .MX (the “Policy” or “LDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, Art. 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 10, 2012. In accordance with the Rules, Art. 5, the due date for Response was July 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 31, 2012.
The Center appointed Martin Michaus-Romero as the sole panelist in this matter on August 9, 2012. 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, Art. 9.
4. Factual Background
Complainant is a Delaware Corporation, located in Mountain View, California, and since its foundation in 1997 the Google search engine has become one of the largest and most highly recognized, and widely used Internet search services in the world. It maintains one of the world’s largest collections of searchable documents. It has been found to be one of the top 5 most valuable global brands since 2001 with Brand Finance Global 500 Ranking GOOGLE mark as the world’s most valuable brand in 2011 valued at USD 44.3 billion.
Complainant owns numerous United States and foreign registrations, including Mexico for the GOOGLE mark, dating back to as early as 1999.
On March 31, 2004 GOOGLE publicly launched its gmail electronic mail and messaging services and the official launch date is April 1, 2004. The gmail service ranked second in PC Worlds 100 Best Products of 2005, received an honorable mention in the Bottom Line Design Awards of 2005, among other recognitions that it has received.
Complainant owns several U.S. and foreign registrations including Mexico for its GMAIL mark and remains valid and in full force and effect.
5. Parties’ Contentions
Complainant states in its Complaint that:
- Respondent registered the disputed domain names incorporating the GMAIL and GOOGLE trademarks without Complainant’s knowledge or authorization;
- The disputed domain names redirect users to the websites “channelawardspot.com” and “the-rewardz-spot.net”, which displayed identical content and offered misdirected users prices in exchange for completing a survey.
- Respondent is engaged in a phishing scheme, a practice intended to defraud consumers into revealing personal and proprietary information. Consequently, the disputed domain names are not used in any type of legitimate business or services. It deceives consumers, who incorrectly understand that they are referred to Google.
- In its Complaint, Complainant asserts that the disputed domain names are confusingly similar to its GMAIL and GOOGLE trademarks, Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
Art. 13 of the Rules reserves to the Panel the authority to determine the proper language of the proceeding.
The Panel notes that the Complaint was filed in English. Respondent, on its turn, has not filed any language submissions or objections to Complainant’s language request.
The Panel also notes that both Complainant and Respondent are located in the United States.
In view of all the above circumstances, the Complainant's request, the location of both parties, and the lack of opposition from Respondent, the Panel finds that there was no prejudice caused to Respondent in accepting the Complaint to be filed in English.
Based on the foregoing, the Panel agrees with the Center’s decision to accept the Complaint filed in English and transmit all communications in Spanish only. However, in light of the particular circumstances of the case, the Panel will render the decision in English.
B. Substantive Elements of the Policy
(i) Identical or Confusingly Similar
The Panel finds that the disputed domain names are identical or confusing similar to the GMAIL and GOOGLE trademarks of Complainant as demonstrated in Annexes 5, 6 and 8 to the Complaint. The GMAIL trademark is reproduced entirely in the disputed domain name <gmail.com.mx>, as is the GOOGLE trademark in the disputed domain name <wwwgoogle.com.mx> with only the addition of “www”.
The Panel finds that the first element of the Policy has been met.
(ii) Rights or Legitimate Interests
The uncontested evidence indicates to the Panel that Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not received permission nor authorization to use the trademarks GMAIL and GOOGLE. There is no evidence that Respondent is (an individual, business or corporation) known by the names “Gmail” and “Google”. Likewise, the Respondent did not provide any evidence or arguments to prove any rights or legitimate interests in the disputed domain names.
The Panel finds that the second element of the Policy has been met.
(iii) Registered and Used in Bad Faith
The disputed domain names redirect to the websites “channelawardspot.com” and “the-rewardz-spot.net”, which according to Complainant displayed identical content and offered misdirected users prices in exchange for completing a survey. According to Complainant, Respondent also appears to be engaged in a phishing scheme with the intention of defrauding consumers into revealing personal and proprietary information.
Based on the statements and documents submitted, the Panel considers that Respondent registered and used the disputed domain names in bad faith, as the Panel finds under the circumstances that Respondent has intentionally traded on the goodwill of the Complainant’s marks.
Thus, the third element of the Policy is satisfied.
For the foregoing reasons, in accordance with Art. 1 of the Policy and 19 and 20 of the Rules, the Panel orders that the disputed domain names <gmail.com.mx> and <wwwgoogle.com.mx> be transferred to the Complainant.
Martin Michaus Romero
Dated: August 22, 2012