The Complainant is Google Inc., Mountain View, California, United States of America, represented by Ranjan Narula Associates, Guargaon, Haryana, India.
The Respondent is Thilak Raj, Net Jobs, Rajasthan, India.
2. The Domain Name and Registrar
The disputed domain name <mygooglemoney.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2009 via e-mail and on January 16, 2009 as a hardcopy. On Janary 13, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 14, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a communication by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 22, 2009. The Center verified that the Complaint together with the amendment to the 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 January 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 18, 2009.
The Center appointed Christian Schalk as the sole panelist in this matter on March 2, 2009. 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.
4. Factual Background
The Complainant was founded in 1997 and has been for many years one of the largest Internet companies of the world. In accordance to a web traffic ranking company, the Complainant's primary website “www.google.com” is one of the world's largest search engine indexing more than 8 billion pages and owning more than 60% of the market share in worldwide searches. The Complainant's websites receive more than 580 million visitors per month. It is the number one search engine in countries such as Argentina, Australia, Canada, France, Germany, India, Italy, Spain, Sweden, the U.K. and the U.S. The Complainant has also one of the largest online advertising networks with -among others- an image index with more than two billion images. It offers further Internet related products in more than 100 languages, such as price search engines, news channels, maps, web mail with instant messaging, office productivity services, and an online payment service. In accordance with the Complainant, its revenues of the third quarter of 2008 amounted to more than 5 billion US-Dollar.
The Complainant has offices in many countries of the world. In India, where the Respondent lives, he has also set up two research and development centers and two branch offices.
The Complainant owns trademark registrations and pending applications for its GOOGLE – trademark in more than 100 countries covering goods and services in the International Classes 9, 16, 25, 35, 36, 38 and 42, for instance,
- Indian trademark registration No. 845041 GOOGLE, covering goods and services in International Class 9, application date March 12, 1999;
- Australian trademark registration No. 788234 GOOGLE, covering goods and services in Int. Classes 9, 38, 42, application date March 12, 1999;
- U.S. trademark registration No. 3140793 GOOGLE, covering goods and services in International Classes 11, 12 16, 18, 21, 25, 28, 35, 38 and 42, application date September 18, 2001.
The domain name <google.com> has been registered on September 15, 1997. The Complainant owns further <google> – domain names under more than 200 gTLDs and ccTLDs.
The Respondent registered the disputed domain name on March 31, 2006.
The Complainant tried to contact the Respondent via e-mail objecting the registration and use of the disputed domain name by the Respondent and seeking its transfer to the Complainant. However, this e-mail was returned undelivered.
In accordance with the material brought before the Panel, the disputed domain name is linked to a website which is used for advertising and selling products. It lays down tools and methods that pretend to facilitate earning huge sums of money in a short period of time.
The headlines of this website are:
“How I Earn $3000 (Rs1.5 lakhs) every month from Google ?”
“Learn Today How 100's of people are Earning >$500 - $1000 Every single day using the Same Search Engine Google We've been Using for many Years!”
The following text starts with the phrase:
“Dear friend,
Give Me 30 Minutes And I'll Teach You To Use The Most Powerful Tool On The Internet (Google Adsense) To Create Multiple Income Streams! (…) You can make make huge money from google without Investment (…) Making money from Google..(…) “
“Google has rapidly gained a status of an independent online business model. Many average people with a little knowledge of HTMP are earning a Huge money with Google AdSense program (…)”
The website continues with the following sentences:
“Here's how it works: Google Adsense lets you place ads on your website. Every time a visitor clivks on an af, you make money”.
“Our “My Google Money” E-book teaches you starting from the search to earn huge money from the Search Engine Giant Google (…)”
“For a limited timeyou can get your “my google Money”
“Today it is just $9 only – This isalimited time price. (This price will be increased to $149 at any time)”.
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's GOOGLE trademark. The Complainant argues that the domain name entirely incorporates the GOOGLE trademark, which is also the only distinctive element of this domain name since the terms “my” and “money” are only dictionary words.
The Complainant submits further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It argues that the Respondent's purpose in selecting the disputed domain name was only to use the fame of the GOOGLE trademark to generate web-traffic and to confuse Internet users visiting the Respondent's site when looking for the Complainant and his services. The Complainant explains in this context that the Respondent makes misleading references to the Complainant's “My Google Money” product and that although the Respondent has placed a disclaimer on its website stating that the trademark GOOGLE belongs to the Complainant, it does not give the right to use the Complainant's registered trademarks without the Complainant's authorization. Therefore, the Complainant concludes that the disputed domain name has been registered only for commercial purposes and that such behaviour cannot constitute a bona fide offering of goods and services.
Moreover, the Complainant believes that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant states that doing so, the Respondent has intentionally attempted to attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Complainant explains further that the Respondent's choice of the domain name was not accidental and has been made to derive unfair monetary advantage. In order to support this argument the Complainant explains that the term GOOGLE is an unique coined word which is exclusively referable to the Complainant and his services, that the GOOGLE trademark has acquired a considerable world wide goodwill, that the Respondent registered the disputed domain name a significant period after the Complainant started using his GOOGLE trademark for the marketing of its goods and services and many years after the Complainant registered the term GOOGLE as a trademark and domain name in many jurisdictions. The Complainant adds further that the Respondent's way of using the disputed domain name creates an association with the Complainant, which does not exist in reality. The Complainant believes that the only reason for the Respondent's behaviour is, to deceive the public by leading it to believe that the Respondent is part of the Complainant's company or that the Respondent's activities have been authorised, approved or sponsored by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It is essential to UDRP proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a Response is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant's submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co.,
WIPO Case No. DNAME2004-0001).
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the term GOOGLE. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant's trademarks.
However, the Panel finds the disputed domain name to be confusingly similar with the Complainant's trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,
WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,
WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,
WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,
WIPO Case No. D2002-0002.
In this case, the terms “my”and “money” are obviously generic terms. Given the variety of the Complainant's products and services it is likely that the disputed domain name could be understood by Internet users finding <mygooglemoney.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and there by increases the likelihood of confusion (see also Koninklijke Philips Electronics N.V. v. Anpol,
WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,
WIPO Case No. D2001-0231).
B. Rights or Legitimate Interests
According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. Moreover, the fact that the Respondent invited others to start commercial activities by taking advantage of the Complainant's products and services and by offering in this connection a book on the website linked with the disputed domain name shows that the Respondent registered the domain name at issue for clear commercial purposes. Such a behaviour cannot constitute a legitimate non-commercial or fair use of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(2) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,
WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the high global reputation of the Complainant especially in the Internet and its numerous branches world wide and also in India, where the Respondent apparently lives and the fact that the Respondent's website explicitly makes references to the Complainant's services, the Panel finds that the Respondent was aware of the Complainant's trademark when he registered the disputed domain name (see Liseberg AB v. Administration Local Manage Technical,
WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. The Respondent appears to have chosen the domain name which is identical with the name of one of the Complainant's services in order to make Internet users believe that the commercial opportunities described on the website linked with the domain name at issue site are either offered by the Complainant directly or at least somehow authorized by the Complainant. Internet users could easily believe that the content of the Respondent's website describes the Complainant's “mygooglemoney” - services. Furthermore, Internet users buying the educational e-book offered on this website are made to believe that they buy it from the Complainant. However, it appears to be the Respondent who receives the money.
Therefore, the Panel believes that the only purpose of having registered and subsequently used the disputed domain name was to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark and services and thus to take commercial advantage also of the Complainant's trademark and its reputation. Such a behaviour constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Moreover, the Respondent has provided inaccurate contact details when he registered the domain name at issue or failed at least to correct such false contact details. The Complainant has used the contact details given in the WHOIS information for the disputed domain name when it tried to contact the Respondent. However, the e-mail was returned because it could not be delivered. The Panel notes that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.
For all these reasons the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mygooglemoney.com> be transferred to the Complainant.
Christian Schalk Sole Panelist
Dated: March 16, 2009
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