The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is none, Software LLC, of Dolnoslakie, Poland.
2. The Domain Name and Registrar
The disputed domain name <google-adservice.com> is registered with Az.pl, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 22, 2009, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, Az.pl, 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. The Center sent an email communication to the Complainant on January 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 10, 2010. 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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 5, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on February 9, 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 is a Delaware corporation located in Mountain View, California. It hardly needs stating that, since the business was founded in 1997, the Complainant's Internet search service “Google” has become one of the largest, most highly recognized, and widely used Internet search services in the world.
Currently, the Complainant's search engine maintains one of the largest collections of searchable documents in the world. Its website at “www.google.com” is one of the most popular destinations on the Internet. For example, comScore and Bloomberg.com have ranked the Complainant's websites as the most visited group of websites in the world. Nielsen NetRatings has ranked its Google's search engine as the number one search engine.
The Complainant also offers advertising services on “www.google.com” and it operates a large online advertising network with hundreds of thousands of publishers.
The Complainant has won a range of industry awards dating back to 1998.
The Complainant owns an international portfolio of registered trademarks for GOOGLE. By way of example, the Complainant has supplied a printout for United States trade mark number 3,140,793 for the stylized word “Google” registered September 12, 2006, in classes 9, 11, 12, 16, 18, 21, 25, 28, 35, 38 and 42.
The disputed domain name was registered on January 9, 2009, in the name of “PrivacyProtect.org”.
The Complainant sent a cease and desist email to Privacyprotect.org on October 5, 2010. On October 5, 2009, PrivacyProtect.org responded with a standard email stating that it was not the actual owner of the domain name and offering a link whereby the owner could be contacted.
Following the filing of this Complaint on December 22, 2009, the registrant was changed to the name of the Respondent.
5. Parties' Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant has rights in the GOOGLE mark that predate the registration date of the domain name.
A domain name may be nearly identical or confusingly similar to a complainant's mark when it fully incorporates said mark. Here, the domain name incorporates the famous GOOGLE mark in its entirety, and is confusingly similar to it.
A domain name registrant may not avoid confusing similarity by simply adding a descriptive or non-distinctive term to another's mark. The disputed domain name merely adds the term “adservice” which conveys that the Respondent is offering a Google-related advertisement service.
Given Google's branding policy whereby Google typically uses its house mark, GOOGLE, with a descriptive word or phrase, users seeing the domain name are even more likely to believe the domain name originates with Google.
Rights or Legitimate Interests
As previous UDRP panels have noted, any respondent would be hard pressed to show that it had rights or legitimate interests in a domain name incorporating the GOOGLE mark because the Complainant's mark is so well-known.
The disputed domain name is parked. Such use supports the Complainant's position that the Respondent has no rights or legitimate interests in the domain name.
On information and belief, the Respondent is not commonly known by the disputed domain name, or any name containing the Complainant's GOOGLE mark.
The Complainant has not authorized or licensed the Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of a domain name incorporating the Complainant's trademark is strong evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
The evidence overwhelmingly supports the conclusion that the Respondent registered and is using the disputed domain name in bad faith. First, the fame and unique qualities of the GOOGLE mark make it extremely unlikely that the Respondent created the disputed domain name independently.
Registration of a domain name containing a well-known trade mark of which a respondent must have been aware may of itself be sufficient proof of registration in bad faith.
The Respondent's use of the domain name to resolve to a parked page containing click-through advertisements constitutes bad faith registration.
Distribution of malware through the Respondent's site constitutes bad faith given that malware is often used to confuse Internet users into clicking on advertisements or making purchases or to steal the financial information or identity of users.
The Respondent has failed to comply with demands from Google regarding transfer of the domain name. Such failure to respond to a cease-and-desist letter indicates bad faith registration and use of a domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark GOOGLE arising from its registered trademarks mentioned above as well as common law rights derived from the extensive, worldwide use of that distinctive name since 1997.
The disputed domain name consists of the Complainant's trademark combined with the descriptive term “adservice”. That term is insufficient to differentiate the domain name from the trademark; on the contrary it enhances the connection given the similarity of “adservice” to the name of Google's well-known “Adwords” and “Adsense” offerings.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,
WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain names could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts that the website at the disputed domain name was used to supply malware and that, following the Complainant's cease and desist letter, the site was changed so that it resolved to a parking page. However, the Complainant has not provided any proof of either usage.
Response 4.5 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions states as follows: “Consensus view: A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” Accordingly, the Panel visited the website at the disputed domain name on February 22, 2010, and has ascertained that it was indeed being used for a parking site including links to the Complainant's own advertising services as well as to other sites offering online advertising services.
It is obvious that the Respondent registered the disputed domain name with the Complainant's famous trademark in mind.
The Respondent has not come forward to deny that the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark. The Panel therefore finds that the Complainant has established 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 <google-adservice.com> be transferred to the Complainant.
Adam Taylor Sole Panelist
Dated: February 22, 2010
Stay updated! Get new cases and decisions by daily email.
