WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Advertising services Saigon Vietnam

Case No. D2009-1157

1. The Parties

The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula & Associates, India.

The Respondent is Advertising services Saigon Vietnam of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <adsgoogle.net> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2009. On August 31, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On September 1, 2009, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 9, 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 September 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 2, 2009.

The Center appointed Alexandre Nappey as the sole panelist in this matter on October 7, 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 facts related are based on the Complainant's submission and annexes.

The Complainant is a public company registered under the laws of the United States of America. It operates the website “www.google.com” which is the world's largest search engine, and numerous other activities focused on Internet services.

Google.com generates revenue by providing advertisers with the opportunity to deliver online advertising relevant to the information displayed on a results page.

The products and services offered by the Complainant reach more than 150 countries worldwide.

The Complainant has obtained trademark registrations for its mark GOOGLE worldwide.

In Viet Nam, where the Respondent appears to be based, the Complainant holds three different registered trademarks (under serial numbers 76424, 82636 and 90987) all of which predate the disputed domain name registration.

The Complainant is also the holder of numerous domain names worldwide, including <google.vn> and <google.com.vn> dedicated to the services it provides in Viet Nam.

The disputed domain name was registered on January 4, 2009. On February 27, 2009, the Complainant's counsel sent a warning letter to the then-registrant requesting the transfer of the disputed domain name to the Complainant.

The formal notice could not be delivered to the then-registrant as its address was incomplete. The Complainant's counsel however spoke to the person who was effectively in control of the disputed domain name.

The Respondent agreed to remove all infringing content and unauthorized reference to the Complainant from the website operated from the disputed domain name. However, it refused to assign the disputed domain name to the Complainant.

The domain name <adsgoogle.net> is currently not active.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

The disputed domain name is confusingly similar to the trademarks owned by the Complainant.

The Complainant's trademark is entirely incorporated in the disputed domain name.

GOOGLE is not a word which is in use in the English language.

The name GOOGLE is the dominant and distinctive element of the domain name.

The addition of the letters “ads” does not make a significant difference as they are commonly used as an abbreviation for “advertisement”.

The Respondent does not have any rights or legitimate interests in respect of the disputed domain name.

The Respondent is not authorized by the Complainant and is not commonly known under “adsgoogle” or the disputed domain name.

The Respondent also does not have any registered trademark or business name for, or incorporating, “adsgoogle”. The Respondent impersonated the Complainant by registering the disputed domain name under the name “Google Advertising Service Center”, which is a false statement.

The Respondent is not making and does not intend to make a legitimate non–commercial or fair use of the disputed domain name. Its use of the disputed domain name cannot consitute a bona fide offering of goods and services.

The Respondent has acted in bad faith in registering and using the disputed 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 disputed domain name may have some affiliation, sponsorship, endorsement or other connection with the Complainant.

The choice of the disputed domain name cannot have been made randomly and must have been made with the name and mark of the Complainant in mind.

The reputation of 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 Complainant's trademarks when it registered the disputed domain name.

The Respondent first registered the disputed domain name on January 4, 2009, i.e. a significant period of time after the Complainant started to trade under the GOOGLE mark both internationally and in Viet Nam.

The Respondent does not provide any service under the name “Google Advertising Service Center”. It is a fake name created to show legitimacy of its operation, whereas its business is run under the name “Universal Technology Ltd.”.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above-cited elements are set out below.

A. Identical or Confusingly Similar

The Complainant has provided substantial evidence of its rights and wide use of the mark GOOGLE. The trademark is however not strictly identical to the disputed domain name <adsgoogle.net>.

The suffix “.net” is to be disregarded for comparison purposes so the Panel has to determine whether the disputed domain name is confusingly similar to the trademark GOOGLE without regards to the gTLD suffix.

The Domain Name incorporates the Complainant's trademark in its entirety but adds the word “ads”, which stands for advertisement or advertising, in front of it.

The addition of generic words to trademarks has been considered in numerous UDRP decisions not to avoid confusing similarity between a domain name and a trademark.

In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel ruled that: “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”. In Google Inc. v. txtcorp,WIPO Case No. D2009-0453, a case closely similar to the present issue, the panel decided: “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 [d]omain [n]ame is also the owner of the trademark to which it is similar, or at least that there is some form of association between the [r]espondent and the [c]omplainant. The addition of ‘4people' does little to distinguish the [d]omain [n]ame from the [c]omplainant or its trademark and may well increase the scope for confusion given the manner in which the trademark Google has come to be used.”

Furthermore, in the present case the word “ads” which is combined to the famous trademark GOOGLE clearly describes one of the main services offered by the Complainant, which generates the main revenue of the Complainant worldwide.

The Panel is of the opinion that there is a strong likelihood that an Internet user may believe that the disputed domain name is operated by the Complainant or at least a company that has been granted an authorization to provide services offered by the Complainant.

The Panel therefore finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is submitted that the Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant's trademarks.

The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain name. On the contrary prior to the present proceedings, the Respondent refused to transfer the disputed domain name.

The Respondent does not appear to make any legitimate use of the domain name for non-commercial activities.

The Panel finds therefore that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent having been found in default, it has not challenged any of the contentions submitted by the Complainant.

Consequently, the Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has to demonstrate both that the disputed domain name has been registered and is being used in bad faith.

The Complainant's documented evidence of its worldwide reputation in the field of online search and related services leads the Panel to consider that the Respondent could not have ignored the Complainant and its trademark at the time it registered the disputed domain name.

As ruled in numerous cases, registration of a domain name containing a well-known trademark of which a respondent must have been aware may of itself be sufficient proof of registration in bad faith.

In Google Inc. v. Thilak Raj, Net Jobs,WIPO Case No. D2009-0033 regarding <mygooglemoney.com> the panel ruled: “Given the high global reputation of the [c]omplainant especially in the Internet and its numerous branches world wide and also in India, where the [r]espondent apparently lives and the fact that the [r]espondent's website explicitly makes references to the [c]omplainant's services, the [p]anel finds that the [r]espondent was aware of the [c]omplainant's trademark when he registered the disputed domain name (see Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the [p]anel believes that the [r]espondent registered the disputed domain name in bad faith.”

The Respondent also appears to have chosen a domain name which refers to one of the main services offered by the Complainant, i.e. advertising services (“ads”) in order to make Internet users believe that the services offered on a website linked with the disputed domain name are either offered by the Complainant directly or at least authorized by the Complainant.

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 of the Complainant's trademark and its reputation. Such behaviour constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

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 <adsgoogle.net> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist

Dated: October 27, 2009