WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Globehosting, Inc.
Case No. DRO2014-0011
1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America (the “USA”), represented by Rominvent S.A., Romania.
The Respondent is Globehosting, Inc. of New Castle, USA.
2. The Domain Name and Registrar
The disputed domain name <campaniigoogleadwords.ro> is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint was filed in Romanian with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2014. On October 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details1 . In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 20, 2014.
According to information the Center received from the concerned registrar, the language of the registration agreement for the disputed domain name is English. Accordingly, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in Romanian; or 2) submit the Complaint translated into English; or 3) submit a request for Romanian to be the language of the administrative proceedings. On October 20, 2014 the Complainant submitted a translated and amended Complaint in English.
The Center verified that the Complaint together with the amended and translated 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 October 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 28, 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
The Complainant is Google Inc., a North American corporation recognized for its business concerning search, e-mail, online mapping, office productivity, social networking and video sharing services. The Complainant’s founders, Larry Page and Sergey Brin, invented and adopted the name and mark GOOGLE in 1997.
The Complainant’s Google search engine is used each month by more than 581 million users worldwide, including millions of users in the USA and Romania.
In addition to that, the Complainant has various partners in the Google network which provide products and services in more than 150 countries. The most prominent of the Complainant’s well-known advertising services is its ADWORDS service. ADWORDS is a keyword advertising platform launched by the Complainant in 2000. The service allows advertisers to purchase a keyword that will trigger the display of advertisements when a consumer enters that keyword into the Complainant’s Google search engine.
The disputed domain name was registered on July 26, 2012. Verifying the website to which the disputed domain name resolves this Panel found that the website is used to display, describe and offer services for managing Google Adwords campaign in exchange of a price. The website also promotes the offered services by reference to the supplier of the services being “Google Adwords qualified”.
5. Parties’ Contentions
The Complainant contends that it is the owner of the well-known registered service marks GOOGLE and ADWORDS, registered all over the world, including Romania and the European Union. The disputed domain name is confusingly similar to the Complainant’s trademark, because it is constituted by exactly the same expressions “google” and “adwords”, previously registered and used by the Complainant as trademarks.
The Respondent is not commonly known under the disputed domain name and does not have any rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed or authorized by the Complainant to use the trademarks or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name. In addition, the Complainant contends that the website to which the disputed domain name resolves reproduced without authorization the Complainant’s logos and trademarks. The website at the disputed domain name has been used by the Respondent to offer similar keyword platform for advertising services to those offered by the Complainant under the above mentioned trademarks. The Respondent cannot produce any evidence to establish rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent’s purpose in registering the disputed domain name was to use the notoriety of the GOOGLE trademark to generate web traffic and to confuse Internet users. The services provided by the Respondent are identical or similar to those in respect of which the Complainant’s trademark has been registered.
The Respondent did not reply to the Complainant’s contentions but it provided after the due date an informal communication stating that:
“What seems to be the problem? This domain name is canceled. It was registered throw our company and rented by one of our client.”
Although the Respondent email was provided to the Center on November 29, 2014, after the lapse of the due date for the Response, the Panel decides to consider it.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated prior trademark rights in the trademarks GOOGLE and ADWORDS. The Complainant holds over six hundred trademark registrations for the GOOGLE trademark, throughout the world (Annex 5 to the Complaint). The Complainant also filed evidence of registration of the trademark ADWORDS at community level under number 002724672 since June 5, 2002 (Annex 2 to the Complaint), and for the trademark GOOGLE at community level under number 0881006 since January 12, 2006 (Annex 3 to the Complaint).
The Panel finds that the GOOGLE trademarks have reached a well-known status all over the world (see Google Inc. v. Oneandone Private Registration, WIPO Case No. D2009-1674).
The disputed domain name consists of the terms “google” and “adwords”, which are identical with the Complainant’s registered trademarks GOOGLE and ADWORDS. The addition of the generic word “campanii” as a prefix which is the Romanian term for “campaign” is not sufficient in this Panel view to dispel the confusing similarity between the disputed domain name and the Complainant’s trademarks (see for a similar finding Google Inc. v. Oneandone Private Registration, supra).
The term is of a descriptive nature only and the distinctive element of the disputed domain name are obviously the terms “google” and “adwords”. When a disputed domain name incorporates, as here, the entirety of a complainant’s trademark – and a well-known trademark – the addition of common terms does not serve to distinguish adequately the domain name from the mark. See for example F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351.
The addition of the Country Code Top-Level Domain “.ro” does not distinguish the disputed domain name from the Complainant’s trademarks.
Based on the above noting also the absence of any argument to the contrary from the Respondent, this Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
“(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Further, the consensus view of WIPO panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1.
The Panel is of the opinion that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Based upon the available record, the Respondent has failed to overturn such prima facie case. The Panel notes that there is no evidence - be it the WhoIs information or any other information in the record - to indicate that the Respondent was commonly known by the disputed domain name. Nor is there evidence that the Complainant would have authorized the Respondent to register a domain name containing its registered trademarks. The Panel also notes that the Respondent registered and began using the disputed domain name long after the Complainant had registered GOOGLE and ADWORDS as trademarks
According to the information resulted from reviewing the website to which the disputed domain name resolves, it appears that the Respondent is using the disputed domain name in association with a website which directly targets the Complainant’s GOOGLE and ADWORDS trademarks and the services which the Complainant provides thereunder. In the circumstances, this does not constitute in this Panel`s view a bona fide offering of goods or services (see also Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298).
Moreover, the Respondent appears to be a professional acting in the field of domain name sales and Internet hosting on various servers and provides such services against a price. Having this in mind, registration of a domain name which includes a famous trademark with a view to be used against a price by a third party, other than the trademark holder, cannot be considered a bona fide offering of goods or services (for a similar finding see OPEL Special Vehicles GmbH v. Globe Hosting Inc., WIPO Case No. DRO2014-0003).
The Panel therefore concludes that the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy.
For the reasons above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore the condition of paragraph 4(a)(ii) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant established that the GOOGLE trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
Such status had been acquired by the Complainant’s trademark before the date of registration of the disputed domain name by the Respondent (i.e., July 26, 2012). The goodwill of the GOOGLE trademark is most likely what made the Respondent register the disputed domain name.
Consequently, the fact of the registration of the disputed domain name, which includes the Complainant’s trademarks GOOGLE and ADWORDS and also a descriptive term “campanii”, and the fact that the disputed domain name resolves to a website offering services similar to those of the Complainant (displaying a keyword platform for advertising services) make it obvious that the Respondent was aware of the Complainant’s rights in the GOOGLE and ADWORDS trademarks at the time it registered the disputed domain name.
Additionally, as shown above, the Respondent used the disputed domain name to pass itself off as Complainant, to attract customers to its website for financial gain.
An additional factor retained by the Panel as indicative of bad faith registration and use of the disputed domain name is: the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of said Policy has been met.
For 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 <campaniigoogleadwords.ro> be transferred to the Complainant.
Date: December 16, 2014
1 . Domain Name Expiry
According to the information received from the Registrar, the disputed domain name was set to expire on October 25, 2014, after the filing of the Complaint. On October 17, 2014 the Center sent an email communication to the registrar asking confirmation, in accordance with ICANN’s expired Domain Deletion Policy, paragraph 22.214.171.124:
1. that 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,
2. whether any action is required by the parties to keep the domain name under Registrar LOCK so that the administrative proceedings can continue as required under the UDRP.
In its response of October 20, 2014 the Registrar confirmed that the disputed domain name is locked and the operations such as delete, trade (transfer right of use), contact details update are prohibited.
The Registrar further confirmed on October 21, 2014, following another email communication from the Center of October 20, 2014 where the Center specifically asked if any action by the parties is required, that there are three possibilities for the parties:
1. ”following the WIPO procedure,
2. trading (owner change) the domain name according the trade procedure from “www.rotld.ro” – transfer right of use. In this case, the parties must notify WIPO in this regards,
3. waiting for the domain name deletion, the parties must agree and notify WIPO too, and after the domain deletion, the new owner can ask for a new registration.”
Although the response from the registrar is not very clear, this Panel understands that the disputed domain name will remain locked until these proceedings are concluded irrespective of the lapse of the expiry date, and that a decision of this Panel, for transfer of the disputed domain name could be implemented by the Registrar.
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 (see for a similar finding Google Inc. v. Yang HuaTing, WIPO Case No. DCC2010-0007).