The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Billa Rajinikar Reddy of Hyderabad, Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <chotagoogle.com> is registered with Net 4 India Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2009. On October 20, 2009, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name. On October 23, 2009, Net 4 India Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 26, 2009, the Complainant sent a suspension request to the Center. On October 27, 2009, the Center notified the suspension to the parties and the registrar. On November 19, 2009, the Complainant transmitted by email a further suspension. On the same day, the Center notified the further suspension to the parties and the registrar. On November 25, 2009, the Complainant requested to re-institute the proceedings. In response to a notification by the Center regarding the Registrar and Mutual Jurisdiction issues, the Complainant filed an amendment to the Complaint on November 25, 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 November 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 4, 2010. 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, Google Inc., is a North American corporation greatly recognized for its business concerning Internet search, e-mail, online mapping, office productivity, social networking and video sharing services. Its primary website was registered in 1997.
In 2006, the verb “to google” was added to the Merriam Webster Collegiate Dictionary and to the Oxford English Dictionary, meaning “to use the Google search engine to obtain information on the internet”.
The Complainant's Google Network, which includes several websites of its property, reaches more than 80 percent of Internet users in the world.
The Complainant's founders, Larry Page and Sergey Brin, invented and adopted the name and mark GOOGLE in 1997.
The Complainant has obtained trademark registrations for its mark GOOGLE around the world. In India, the Complainant's mark GOOGLE was first registered in 1999.
The disputed domain name is <chotagoogle.com> and it was registered by the Respondent on March 11, 2008.
The Panel accessed the webpage placed at the disputed domain name on January 8, 2010. The website, entitled “Chota Google”, consists of a search engine that redirects the queries to the Complainant's website at “www.google.com”. The website also contains references to other Internet services and links to commercial webpages (under the titles “banks”, “travel”, “jobs”, etc.).
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
(i) The Complainant's business under the mark GOOGLE was founded in 1997 and had a sudden vertiginous growth to become multi-billion dollar business. Its primary website “www.google.com” is one of the most used search engines in the world. In addition to that, the Complainant has lots of partners that compose the Google Network which provide products and services that reach more than 150 countries, including India. The Complainant has obtained trademark registrations for its mark GOOGLE world wide and is the owner of several other domain names composed by the expression “google”.
(ii) The Respondent has not answered any of the Complainant's attempts to amicably solve the controversy on the present domain name.
(iii) The disputed domain name is confusingly similar to the Complainant's trademark, because it is constituted by exactly the same word “google” registered by the Complainant as a trademark and the expression “chota” which means “small” in Hindi language.
(iv) The Respondent has no rights or legitimate interests in respect of the disputed domain name. That is because the Respondent's webpage imitates the Complainant's website. Furthermore, the Respondent has not been commonly known by the expression “google” and the Complainant has not authorized the Respondent to use any of its trademarks.
(v) The Respondent has registered and is using the disputed domain name in bad faith. The fame and unique qualities of the GOOGLE mark make it hard to believe that the Respondent had created the domain name independently. In addition, the Respondent's current use of the domain name to resolve to a website that imitates the Complainant's webpage constitutes bad faith registration. Also, the chosen composition of the domain name shows bad faith, because the Respondent has used the term “chota” in conjunction with the Complainant's trademark GOOGLE in order to convince consumers that this website is a smaller version of the Complainant's own domain name, webpage or business.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Regardless of the fact the Respondent failed on submitting a formal reply, the Panel shall consider whether the requirements of the Policy have been met.
A. Identical or Confusingly Similar
Annex 5 to the Complaint shows registration of GOOGLE trademark in India since 1999. Annex 6 to the Complaint demonstrates registrations in Australia since 1999, and in the United States of America since 1997.
Furthermore, the Complainant annexed a list of trademark registrations and/or applications including the expression GOOGLE in sereval contries, such as the Islamic State of Afghanistan, the Federative Republic of Brazil, the People's Republic of China, Japan, United Kingdom of Great Britain and Northern Ireland.
The Panel has no doubt that the GOOGLE trademark is directly connected with the Complainant's activities and has reached a well-known status all over the world.
The trademark GOOGLE is wholly encompassed within the disputed domain name, which also includes the word “chota” (“small” in Hindi language).
The Panel has concluded that the addition of the word “chota” is not sufficient to refute the similarity between the disputed domain name and the Complainant's trademark, required under paragraph 4(a)(i) from the Policy. In a previous UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd.,
WIPO Case No. D2008-0954).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use 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; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent.
The Respondent is not commonly known by the domain name, which includes a widely well-known trademark.
The domain name has been used in connection with a webpage that imitates the Complainant's real website, which cannot be understood to be legitimate.
The fact that the search bar placed on the webpage published under the disputed domain leads to the Complainant's website does not characterize a legitimate use. In a previous WIPO UDRP decision, the panel concluded that “its subsequent redirection of the disputed domain name to a webpage referring only to a type of services in the same general area as those provided by the Complainant (i.e., “International Real Estate Agent Network”) does not establish fair use by Respondent. At best, this might be construed as using a neutral “parking page”. This does not establish rights or legitimate interests in a term protected as the service mark […] By using the domain name that incorporates Complainant's mark Respondent may well be able to generate more search hits for its own website, but this mainly appears to suggest that Respondent is seeking to take unfair advantage of Complainant's goodwill in its mark”. (Intagent LLC v. Dominor LLC,
WIPO Case No. D2008-1878).
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.
The registration of the disputed domain name occurred in 2008, when the Complainant's trademark GOOGLE was already well-known around the world. Therefore, it is not feasible that the Respondent could ignore the Complainant's reputation and business when he registered the contested domain name.
Moreover, the redirection of the searches made under the Respondent's webpage to the Complainant's official website makes clear that the use of the word “google” to compose the domain name was not a coincidence.
Therefore, the Panel is convinced that the addition of the word “chota” (“small”) to the trademark GOOGLE was intentionally made in order to convince consumers that the website is a smaller version of the Complainant's own business, creating a likelihood of confusion as to the source of the services offered under the contested domain name.
Finally, the Respondent's webpage clearly imitates the website published at <google.com>, which is enough to demonstrate bad faith under previous WIPO UDRP decisions. For reference on the subject, it is important to point out that “[…] Respondents' adoption of Complainant's trademark and using it in conjunction with a website which is substantially identical in appearance to Complainant's website […] clearly demonstrates not only that the domain name was registered in bad faith, but that it is currently being used in bad faith”. (Novabell S.p.A. v. Clear Imaging / Domains by Proxy Inc.,
WIPO Case No. D2007-1154)
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain name in bad faith, satisfying the third element of the Policy.
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 <chotagoogle.com> be transferred to the Complainant.
Rodrigo Azevedo Sole Panelist
>Dated: January 21, 2010
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