The Complainant is Google Inc. of California, United States of America, represented by Middletons Lawyers, Australia.
The Respondent is txtcorp of Doncaster, Australia.
2. The Domain Name and Registrar
The disputed domain name <google4people.net> (hereafter the “Domain Name”) is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 7, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On April 7, 2009, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2009 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 16, 2009. The Center verified that the amended 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 April 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for a Response was May 19, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed Jon Lang as the sole panelist in this matter on June 18, 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.
4. Factual Background
The Complainant is a public company incorporated in the United States of America. Its main business is focused on Internet search services. It operates web sites at many international domain names, including Australia which is located at “www.google.com.au”.
The Complainant is the registered owner of several Australian trademarks for the name Google.
The Google search engine is widely recognised as the world's predominant and “best search engine”.
The Complainant's brand, which consists of the word “Google”, is famous worldwide. A 2005 Wall Street Journal survey ranked the Complainant as the third most well-known company in the world.
The Complainant has built up a substantial reputation in the “Google” trade mark through both the Internet and other means.
5. Parties' Contentions
A. Complainant
The Domain Name is confusingly similar to the trademarks owned by the Complainant.
“Google” is not a word which is in use in the English language. It is an invented, highly distinctive word which would not have been legitimately chosen for use by the Respondent as part of the Domain Name unless it was attempting to trade off the Complainant's rights.
“Google” is the dominant component of the Domain Name that will resonate with consumers who will, due to the Complainant's substantial reputation, immediately make an association with the Complainant. Adding “4people” to the word “Google” gives the impression that “google4people” is a sub-branch of the Google operation, which will be confusing and misleading for consumers who will assume that the Respondent is related to the Complainant.
The phrase “to Google” has begun to be employed as a verb meaning to search using the Complainant's “Google” search engine. In this vein, “Google4people” suggests that you can use the “Google” search engine to look for people and therefore strongly suggests a connection between the Domain Name and the Complainant.
The Respondent does not have any rights or legitimate interests in respect of the Domain Name.
The Respondent is not commonly known by “google4people” or the Domain Name. The Respondent also does not have any registered trademarks or business names for, or incorporating, “google4people”.
The Respondent is not making and does not intend to make a legitimate fair use of the Domain Name but has chosen the Domain Name for the purposes of intentionally diverting traffic from the Complainant's websites and to mislead Internet users into assuming that some kind of connection exists between the Domain Name and the Complainant.
The Respondent has acted in bad faith in registering and using the Domain Name.
The reputation in the mark “Google” is so substantial and widespread that it is inconceivable that the Respondent would not have had actual notice of the Complainant's rights in the Google trademarks when it registered the Domain Name.
The Respondent has intentionally attempted to attract Internet users familiar with the Complainant, its services and reputation and the Respondent has also intentionally confused consumers into thinking that the Respondent and/or the Domain Name may have some affiliation, sponsorship, endorsement or other connection with the Complainant.
The Complainant's priority dates in relation to its trademarks date back to 1998, which is 10 years prior to the Respondent registering the Domain Name in 2008.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Domain Name incorporates the Complainant's trademark in its entirety but adds immediately after it ‘4people.net'. The suffix ‘.net' is to be disregarded for comparison purposes so the issue is whether the addition of ‘4people' turns what would otherwise be an identical Domain Name into one that is not confusingly similar.
In Oki Data Americas, Inc v. ASD, Inc.,
WIPO Case No. D2001-0903, it was said “As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096 (‘parts' added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off Road Equipment Parts, NAF Case No. FA0008000095497 (‘parts' added to mark CAT in <catparts.com>); Komatsu Ltd.and Komatsu America International Company v. RKWeb Ltd.,
WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in <komatsu-parts.com>)”.
Whilst incorporation of a complainant's trademark in its entirety in a domain name containing other elements (e.g. ‘4people') will not always lead to a finding of confusing similarity, given the fame of the Complainant's trademark and that it is used as a verb (to ‘Google'), this Panel is of the view that it does give rise to confusing similarity in this case. There is a likelihood of confusion in that an Internet user may form the view that the owner of the Domain Name is also the owner of the trademark to which it is similar, or at least that there is some form of association between the Respondent and the Complainant. The addition of ‘4people' does little to distinguish the Domain Name from the Complainant or its trademark and may well increase the scope for confusion given the manner in which the trademark Google has come to be used.
Other UDRP panels have reached similar results in this kind of case. For instance, in Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493 where the disputed domain name was <4microsoft2000.com> and a transfer was ordered, the panel stated: “Therefore, the Sole Panelist finds that the matter in the Domain Name other than the Microsoft mark is non-distinctive and descriptive.”
B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. There is no suggestion that the Respondent is licensed by or affiliated with the Complainant. A respondent can show it has rights to or legitimate interests in a domain name in other ways however. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves which appears to be very much commercial in nature, it cannot be said that there is legitimate noncommercial or fair use. Indeed, in the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the Domain Name resolves. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of a website to which a confusingly similar domain name resolves which has as its key offering ‘search' and which carries links to other commercial websites with a similar focus, could be a bona fide offering of goods or services.
In Drexel University v. David Brouda,WIPO Case No. D2001-0067 the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Indeed, there is no evidence before this Panel to contradict or challenge any of the contentions of the Complainant. This Panel finds therefore that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The burden to demonstrate such rights or legitimate interests therefore falls on the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint, this Panel finds the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It seems clear, given the worldwide fame of the Complainant's trademark, that the Respondent must have been aware of it when the Domain Name was registered. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. Accordingly, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 <google4people.net> be transferred to the Complainant.
Jon Lang Sole Panelist
Dated: July 9, 2009
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