WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2019-0005
The Petitioner is Google LLCofUnited States of America (“United States”), represented by Dickinson Wright, PLLC, United States.
2. Domain Holder
The Domain Holder is L.A., Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <googleshopping.se>
(the “disputed domain name”).
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on January 29, 2019. The Domain Holder submitted a response on February 28, 2019.
The Center appointed Gunnar Karnell as the sole Arbitrator in this matter on March 12, 2019. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
Google is a Delaware Limited Liability Company created in 1997 with offices throughout the world. The Google search engine allows Internet users to search for and find a variety of content.
The disputed domain name was registered on August 20, 2013.
The Petitioner has requested that the disputed domain name <googleshopping.se> be transferred to the Petitioner.
6. Parties’ Contentions
The disputed domain name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Google company and its trade mark GOOGLE were created in 1997. Since then the Google name and logos have exclusively identified the Google company. GOOGLE has been widely promoted among members of the general consuming public since 1997 and it has exclusively identified Google. The word “google” stands for one of the most widely used Internet search services in the world. The company’s primary website is located at “www.google.com”. The company owns and operates websites at over 180 Google-formative domain names. Its search engine indexes one of the world’s largest collections of searchable documents. Google also offers a wide range of Internet-related products and services under the GOOGLE mark, including among others online advertising merchant and hosting services, web analytics and search engine optimization guidance. It has been found to be one of the top five Most Valuable Global Brands since 2001, well before the registration of the disputed domain name <googleshopping.se>. Already in 2004, Google’s websites were ranked among the most visited. Now being the world’s largest search engine, it indexes pages from over 230 million domains. In May 2011, it surpassed one billion visitors globally over “www.google.com”.
Throughout the world, the Petitioner owns a substantial number of trade mark registrations for its highly distinctive GOOGLE trade mark and related logos, to which the Petitioner has made widespread use, making them globally well known. Numerous, and over the world widespread, valid and in force registrations of Petitioner’s GOOGLE trade marks and applications for the same in Sweden and many other countries are referred to in a list annexed to the Petitioner’s claim. The Petitioner acquired enforceable rights in the GOOGLE trade marks well preceding the registration of the disputed domain name <googleshopping.se>.
The Petitioner also uses its GOOGLE SHOPPING trade mark in connection with its online service.
The Domain Holder incorporated both the name Google and the GOOGLE SHOPPING trade mark in the disputed domain name, where the addition of the country code Top-Level Domain (“ccTLD”) “.se” fails to prevent confusion.
The disputed domain name has been registered or used in bad faith
The Petitioner has not authorized the Domain Holder to register the disputed domain name or to use it in any manner. It was registered with actual knowledge of and in contemplation of the Petitioner’s trade marks.
Nevertheless, on its website the Domain Holder makes use of the GOOGLE trade marks and directs consumers to send “a request to mail @googleshopping.se”. In reality, on August 30, 2018, the Petitioner notified the Domain Holder that it would not approve its request for a Google Comparison Shopping service multi-client account for the Domain Holder’s website, noting that “the submitted domain name “‘googleshopping.se” and the display name “Google Shopping” for use on Shopping ads, … would be confusing to users and in violation of the Petitioner’s “Misrepresentation of Self or Product” and “Trade mark Policies”. Evidently, the Domain Holder intended to use the disputed domain name as a “landing page” for a Google Shopping merchant account of its own, if admitted to a Google Partners Program. In such programs, Google trains, assesses and then certifies certain business in the use of Google’s products and services. In the past, an Adwords service was included. On September 5 and 28, 2018, the Petitioner again, to attain an amicable resolution of the dispute, requested deactivation or transfer of the disputed domain name to the Petitioner, to which the Domain Holder replied by e-mail that he wanted to keep it, having owned it for five years, liking it to reflect his doings and planning for new content in the following months, “training advertisers within Google Shopping…to the benefit for my client, myself and Google”. To a later letter from the Petitioner there was no reply. The Domain Holder’s use of the disputed domain name, although not as a landing place for Google Shopping, continues, currently resolving to a website offering “cutting edge education in Adwords and Google Shopping”. There is no disclaimer or clarification at the Domain Holder’s webpage that the disputed domain name and resolving website are not owned by, affiliated with, associated to or otherwise endorsed by the Petitioner. Obviously, the Domain Holder registered the disputed domain name knowing about the Petitioner’s rights due to the connection between the Domain Holder’s website and the Petitioner’s business.
The Domain Holder has no rights or justified interests in the disputed domain name
There is no information known to the Petitioner that the Domain Holder has any rights or justified interests in the disputed domain name. The Petitioner has not authorized its registration, which is targeting Internet users who seek to engage with Google and its Google Shopping platform. The Domain Holder has never been, and it is not now, commonly known by the disputed domain name or any name containing the Google symbols or name. Neither the Domain Holder nor the services offered by it or associated with the disputed domain name are endorsed by the Petitioner. The Domain Holder is not making a bona fide offeringof goods or a landing page for its Google Shopping account, or a legitimate noncommercial or fair use of the disputed domain name. It improperly uses and displays an Adwords Partner Badge on the resolving website without being allowed by the Petitioner, thereby deceiving Internet users into believing that the Domain Holder has been certified or otherwise endorsed by the Petitioner through its Partner certification program. Its conduct is intended to divert users away from the Petitioner’s own website, at that profiting from Internet users’ false belief that they have reached a site operated and endorsed by the Petitioner and to promote the Domain Holder’s own related business.
B. Domain Holder
The disputed domain name is similar to the GOOGLE trade mark. However, GOOGLE has become a very generic brand and a word which people in general use to express the act of a search on Internet, “to google something”. GOOGLE could therefore be seen as having, by degeneration, lost its trade mark identity. The word “googla/google” is even written as a verb in the official Swedish word dictionary (the National Encyclopedia).
A list, “Trademark Records By Country”, added to the present Case file by the Petitioner in evidence of Google being “a name which is legally recognized in Sweden”, and indicated to have been applied for registration by the Petitioner, does not include any GOOGLE register indication for Sweden.
The disputed domain name was registered for the Domain Holder and has since then been used to declare the Domain Holder’s skills within the domains of Google Ads (advertisements) and Google Shopping Ads. The skills serve filling the search engine result page of <google.com> with related advertisement content.
The Domain Holder’s application for a Google Comparison Shopping account, turned down as mentioned by the Petitioner, served the purpose to open for the Domain Holder’s professional use of the disputed domain name in directing addressees to send what was worded a “request to firstname.lastname@example.org and we will take it from there”. It refers to the Domain Holder’s interest of being contacted as a consultant regarding Google Ads & Google Shopping Ads. Since 2011, the Domain Holder has worked as employed by media agencies and advertisers, shopping for its own company or representing a media or advertising company within the so-called Online Marketing space.
The disputed domain name has played an important role in attracting potential advertisers to the services of the Domain Holder, not only to its own benefit but also to that of its employers and to the Petitioner itself. It has not been a matter of bad faith. When excluded by the Petitioner from using the disputed domain name in its service, the Domain Holder accepted that, so as only to use the disputed domain name in the original purpose of so serving the Domain Holder’s clients as was first intended, offering “tailor made trainings”. Now the Domain Holder is certified for the Google Partner Program under the Domain Holder’s current employer. Thousands of websites, companies and consultants globally offer the same service on their websites or elsewhere by referring to the Petitioner as Google and using the trademarked name GOOGLE in written text and images. The Domain Holder’s service “has helped advertisers to advertise on Google”, contributing to its business. The Domain Holder concludes that the disputed domain name itself “explains, very relevant, within what area I offer my services. Therefore, I advocate that I have the right to keep and use my domain name”.
The Domain Holder remarks that its justified interest in the disputed domain name is its relevance to the Domain Holder’s profession over the last eight years, not advertising the Domain Holder, neither in person nor on its website, to be the Petitioner or the provider of Google Shopping ads, the consultations being in services around GoogleAds and Google Shopping.
7. Discussion and findings
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
To this case apply the “Terms and conditions of registration applicable for the for the top-level domain.se” from February 6, 2019, established by the Swedish Internet Infrastructure Foundation, containing “Conditions for deregistration or transfer” in paragraph 7.2, listing three conditions that must be fulfilled under paragraph.7.2.1, further explained in an appurtenant document “Instructions pertaining to ADR (paragraph 7)”.
Hence, the first condition to be met for a transfer in the present case, as requested by the Petitioner, among the types of domain names listed for any identifiability or similarity with the disputed domain name, is only that the latter must be compared to a “trade symbol (trade mark or service mark), a trade name or secondary name”, (paragraph 7.2.1. a. or b.), which is recognized in Sweden and to which the Petitioner can prove its rights.
The Arbitrator agrees with the Domain Holder that the disputed domain name is similar to the Petitioner’s GOOGLE mark. Be it in use as a trade symbol or name, years before the Domain Holder’s registration and use of the disputed domain name, GOOGLE was, and it is, worldwide, in Sweden included, known and recognized, as belonging to the Petitioner, making information in its widest meaning globally accessible by its platforms. Enough so for the Petitioner not to have needed to refer more precisely about Sweden-related registration support in its application for transfer of the disputed domain name than to a non-specified application for a Swedish trademark registration together with a list to the case record of trade symbol registrations in lots of other countries, etc.
The Domain Holder has noted that “Google has become a very generic brand and word”, which people in general use to express the act of a search on Internet. Therefore, the Domain Holder points out that the trade mark GOOGLE could be seen as “degenerated of its trade mark”.
If,” in common parlance or in accordance with established business language, a sign has become a common designation for the product or service”, the trade mark may no more qualify for trade mark protection (5 § of the Swedish Trade Mark Act of 2019). Clearly, however, the word “google” has not changed over from being a name and trade mark to denote a certain kind of product or service. The market is and has been over years full of specific platform products and other Internet search services, competing with each other under different trade symbols, trade names and other characteristics.
The Arbitrator leaves the issues of registration measures in Sweden and degeneration without further comment and concludes that the Petitioner has proven its rights to trade symbols and trade names legally recognized in Sweden.
B. The Domain Name has been registered or used in bad faith
Prior to the Domain Holder’s registration of the disputed domain name, GOOGLE was already a well-established designation, exclusively associated with the Petitioner, so in Sweden as elsewhere. The Domain Holder must have known of GOOGLE and the appurtenant rights when registering the disputed domain name, alerted by the extensive media coverage since already many years before the registration. The GOOGLE symbol marks the main way for millions of users to avail themselves of the Petitioner’s services. The Domain Holder has admitted that it is utilizing and planning further to utilize the Petitioner’s wide reputation, market position and characteristic feature to attract traffic to its own website, since years there using the disputed domain name for marketing its own services to increase revenues by “training advertisers” offering “tailor made training” for use of Google facilities. That the Domain Holder’s educational endeavors might have drawn users to the Petitioner’s platforms and may still do so serves to no excuse for the Domain Holder’s behavior. The offer to the Petitioner to use the disputed domain name in service to the Petitioner was turned down by the latter, replying that it would confuse the users. That should have served as a warning against continued use of the disputed domain name.
The Arbitrator concludes that the Domain Holder has registered and used the disputed domain name in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The “Instructions pertaining to ADR (paragraph 7)”, mentioned here above under 7 A, contains a list of examples and circumstances that may support or be seen to tell against that a Domain Holder has a right or justified interest in its disputed domain name. The list only contains examples to be viewed together for their total effect. Nothing in the case file shows about any rights or relevant interests on the part of the Domain Holder. On the contrary, the Domain Holder erroneously shows lack of understanding about how law applies to his doings, and this to the effect of looking at his earlier and present current infringements of the Petitioner’s rights as might it be excused by the Domain Holder’s instructive service initiatives, directed to the Petitioner’s GOOGLE marketing by the Domain Holder’s contracted, educated platform advertisers.
The Arbitrator concludes that the Domain Holder has no rights or justified interest in the disputed domain name.
The Disputed domain name shall be transferred to the Petitioner.
Issues, brought forward by the Domain Holder, of a Petitioner’s possible omission to specify current trade mark registration status in Sweden for Petitioner’s rights and about degeneration of Petitioner’s trade mark rights, suggested by the Domain Holder, have been disregarded by the Arbitrator as irrelevant. The Petitioner has proven its rights to symbols and trade names recognized in Sweden. The Domain Holder has been found to have registered and used the disputed domain name in bad faith and without rights or justified interest in the disputed domain name, which has consequently been ordered to be transferred to the Petitioner.
March 30, 2019