WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Nijat Hassanov
Case No. D2011-1054
1. The Parties
1.1 The Complainant is Google Inc. of United States of America; (the “Complainant”) represented by Ranjan Narula Associates, India.
1.2 The Respondent is Nijat Hassanov of Azerbaijan (“the Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <googlexxx.com> (“the disputed Domain Name”) is registered with Moniker Online Services, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 22, 2011, the Center transmitted by email to Moniker Online Services, Inc. a request for registrar verification in connection with the disputed Domain Name. On June 23, 2011, Moniker Online Services, Inc. transmitted by email to the Center its verification response confirming that Nijat Hassanov is listed as the registrant and providing the contact details. The registrant being different to Moniker Privacy Services, the entity named in the original Complaint as the Respondent, the Complainant was invited to file an amended Complaint by June 29, 2011.
3.2 The amended Complaint was received by the Center on June 28, 2011 and 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the amended Complaint, and the proceedings commenced on June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2011.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on July 26, 2011. 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
4.1 The Complainant is Google Inc., a company organized and existing under the laws of Delaware with its corporate office in Mountain View, California, United States of America (the “U.S.”). The Complainant’s business under the name “Google” founded in 1997 has since grown into a multi-billion dollar business. The Complainant’s primary website “www.google.com” was registered on September 15, 1997, is widely recognized as the world’s largest search engine, and generates revenue by providing advertisers with the opportunity to deliver measurable and cost effective advertising. The Complainant also offers a wide range of other products and services such as software applications including the “Google Desktop” search software, and Internet based tools through “Google Earth” a service that allows people to map out their localities with street names and landmarks thereby creating an online map. The Complainant’s revenue for the year 2010 was USD 29,321 million derived from products and services offered in more than 150 countries and in more than 100 languages. The Complainant currently employs 20,000 employees worldwide.
4.2 The Respondent is located in Azerbaijan and according to the WhoIs database, the disputed Domain Name was registered on September 11, 2002.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant owns numerous foreign trademark registrations for the well-known GOOGLE trade mark, including in Azerbaijan, U.S., India and the United Kingdom of Great Britain and Northern Ireland (the “U.K.”) and a large number of other countries around the world as shown in the list of registrations attached to these proceedings. The Complainant’s Google Network reaches more than 80% of worldwide Internet users. Apart from “www.google.com”, the Complainant also owns and operates a number of other Google domains worldwide. The Complainant states further it has used the GOOGLE mark continuously and has established rights in the trademark prior to the registration of the disputed Domain Name on September 11, 2002 by reason of many trademark registrations issued and applications filed before that date. The Complainant in this regard refers to the case of Google Inc. v. Smith Smithers, NAF Claim No. 826563.
5.2 The Complainant submits further that the disputed Domain Name <googlexxx.com> is confusingly similar to the Complainant’s famous GOOGLE mark as it incorporates the mark in its entirety. The Complainant argues in this regard that the mere incorporation of prefixes or suffixes or in particular the addition of the letters “xxx” does not eliminate the confusing similarity of the disputed Domain Name with the Complainant‘s GOOGLE trademark. In support, the Complainant refers to the decision in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,
WIPO Case No. D2003-0174, where it was decided that the domain names <pepsix.com> and <pepsixxx.com> were confusingly similar to the complainant’s trademark PEPSI as the addition of the letters “x” and “xxx” and of the suffix “com” did not in any way prevent the likelihood of confusion.
5.3 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name as the Respondent has not been authorized by the Complainant to register or use the disputed Domain Name. The Complainant states further that the Respondent’s purpose for selecting the disputed Domain Name was plainly to exploit the Complainant’s famous GOOGLE trademark to generate web-traffic and confuse Internet users visiting the Respondent’s site for unlawful financial gain. The Respondent is not and has never been known by the GOOGLE name, nickname or mark according to the Respondent’s information on the WhoIs database.
5.4 The Complainant asserts that upon viewing the website at the disputed Domain Name, it gives the impression that videos, movies can be downloaded, television channels can be viewed online, CDs/DVDs are available on rent, etc., and that other than sponsored links, the website does not have any substantive content. The Complainant further submits that the Respondent registered the disputed Domain Name for the purpose of reselling and not for carrying out any business. Further, the Complainant asserts that the Respondent has in the past posted pornographic material in order to attract Internet visitors 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. It is further submitted that such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed Domain Name. In support reference is made to a number of cases including American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486.
5.5 The Complainant also asserts that when the Respondent registered the disputed Domain Name, he must have been aware of the Complainant’s activities, its trademarks and its Google domain name and these facts establish a prima facie case that the Respondent has no rights or legitimate interest in the disputed Domain Name and pursuant to the Policy the burden shifts to the Respondent to show it does have rights or a legitimate interest, as stipulated in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
5.6 With regards to registration and use in bad faith, the Complainant submits that the Respondent evidently registered and is using the disputed Domain Name in bad faith for the following reasons: (a) in the light of the famous and unique qualities of the GOOGLE trademark, the Respondent ought to have had constructive if not actual notice of the existence of the Complainant’s long established GOOGLE trademark rights; thus, the Respondent’s registration of the disputed Domain Name despite such notice is evidence of bad faith. See Google, Inc. v. Abercrombie 1, NAF Claim No. 101579; (b) the Respondent’s choice of domain name is not accidental and clearly has been made to derive unfair monetary advantage; (c) the Respondent has blatantly used the Complainant’s famous trademark GOOGLE on its website such as Google Chrome, Google Home Page, Google Ads, etc., with the intention of deceiving Internet users into believing that the Respondent is part of the Complainant’s company or that the Respondent’s activities have been authorized, approved or sponsored by the Complainant; (d) the Respondent has deliberately used the disputed Domain Name over the years to depict pornographic content which has severely tarnished the Complainant’s trademark and as held in Benetton Group SpA v. Domain for Sale,
WIPO Case No. D2001-1498, such unauthorized use constitutes evidence of bad faith usage.
B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; (iii) and that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.
A. Identical or Confusingly Similar
6.3 The Panel finds on the undisputed facts as recounted by the Complainant that the disputed Domain Name, namely <googlexxx.com> is confusingly similar to the well-known GOOGLE trademark owned exclusively by the Complainant. It is patently obvious that the disputed Domain Name wholly incorporates the Complainant’s GOOGLE trademark. This Panel is therefore satisfied as the Complainant contends that the mere addition of the letters “xxx” and the suffix “com” does not in any way sufficiently distinguish the disputed Domain Name from the Complainant’s trademark and equally does not prevent the likelihood of confusion in the minds of Internet visitors.
6.4 In arriving at the finding in paragraph 6.3 above, the Panel has placed reliance on a number of cases cited by the Complainant, in particular the case of PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,
WIPO Case No. D2003-0174, where the domain names <pepsix.com> and <pepsixxx.com> were held to be confusingly similar to the complainant’s trademark PEPSI. Just as in this case the mere addition of the letters “x” and “xxx” and the suffix “com” was held to be an irrelevant distinction which did not prevent the likelihood of confusion in the minds of Internet visitors.
6.5 Accordingly, the Panel finds without any doubt that the Complainant has established the disputed Domain Name to be confusingly similar to the Complainant’s GOOGLE trademark in accordance with paragraph 4(a) of the UDRP Policy.
B. Rights or Legitimate Interests
6.6 The Panel also finds that the Respondent has failed to provide any concrete evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant asserts, there is no evidence of any relationship between the Respondent and the Complainant or evidence of consent or any license issued to the Respondent. The Panel also notes that the Respondent is not carrying out any activities on the website, except the display of sponsored links, as demonstrated by a distinct lack of substantive content and has in the past posted pornographic content on the website as evidenced by a number of web shots dated September 15, 2008, May 28, 2002, and September 18, 2001; therefore, the Respondent has failed to establish a bonafide offering of goods and services contrary to paragraph 4(c)(i) of the Policy.
6.7 Furthermore, the Panel is satisfied that as the Respondent has deliberately registered the disputed Domain Name with the intention of misleading Internet visitors and creating a likelihood of confusion with the Complainant’s trademark as to sponsorship, affiliation or endorsement of the website, such usage by the Respondent does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed Domain Name as held in American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486.
6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and has continued to use the disputed Domain Name in bad faith. The Panel in this regard has taken a number of unchallenged factors into account in arriving at this finding. In the first instance the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide exclusive rights in the GOOGLE trademark dating back to September 1997, which products and services are sold in well over 150 countries including Azerbaijan where the Respondent is based. The Respondent, with the deliberate intention to create a likelihood of confusion with the Complainant’s trademark in the minds of Internet visitors, chose to register the disputed Domain Name. Accordingly, the Respondent knew or ought to have known of the Complainant’s prior established rights in the GOOGLE trademark. Secondly, the Panel finds without hesitation that since the Respondent in the past had deliberately used the disputed Domain Name to depict pornographic content, this is further evidence of bad faith usage as held in the case of Benetton Group SpA v. Domain for Sale,
WIPO Case No. D2001-1498. Thirdly, the Panel finds that the Respondent registered the disputed Domain Name to generate web traffic and thereby derive commercial profits and/or offer the disputed Domain Name for sale. Fourthly, the Panel has equally taken into account the Respondent’s failure to challenge the evidence amassed against him by the Complainant and has therefore made adverse inferences against the Respondent.
6.10 The Panel therefore finds that the Complainant has established the finding of bad faith registration and use within the ambit of the Policy.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <googlexxx.com> be transferred to the Complainant.
Ike Ehiribe
Sole Panelist
Dated: August 8, 2011
