The Complainant is Google Inc., of California, United States of America, represented by Middletons Lawyers, Australia.
The Respondent is Jan Jeltes, of South Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <googler.com.au> is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 15, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name. On July 17, 2008, Melbourne IT Ltd informed the Center that the disputed domain name had been transferred to PlanetDomain. On July 17, 2008, the Center transmitted by email to Planet Domain Pty Ltd a request for registrar verification in connection with the disputed domain name. On August 28, 2008, Planet Domain Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 1, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2008. The Response was filed with the Center on September 24, 2008.
The Center appointed John Swinson as the sole panelist in this matter on October 6, 2008. 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. The Complainant provides one of the world's largest Internet search engines under the brand GOOGLE. The Complainant has an Australian subsidiary called Google Australia Pty Ltd.
The Respondent is an individual who resides in Australia, and at times in the United Kingdom of Great Britain and Northern Ireland. He was previously a director of an Australian company called N. Tea Pty Ltd, which is now deregistered.
The disputed domain name was registered on December 1, 2003.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant is the registered owner of several Australian registered trade marks, being registered trade mark numbers 788234 (GOOGLE word mark) with a priority date of September 16, 1998; 1049124 (GOOGLE word mark) with a priority date of April 4, 2005; 1111537 (Google logo) with a priority date of January 12, 2006; and 1130283 (GOOGLE word mark), with a priority date of March 2, 2006.
The Complainant operates GOOGLE websites at many international domains, including in Australia at “www.google.com.au”. The Complainant's most popular website is “www.google.com”. The GOOGLE search engine is widely recognised as the world's best search engine, and is also recognised as the number one search engine and top website in various countries. Reports have shown that GOOGLE is also the world's largest search engine, capturing almost 62% of the market share in worldwide searches.
The GOOGLE brand has been included in the list of the world's most popular brands by various sources, and has been valued at over $17 billion dollars. The Complainant has a powerful and widespread reputation in the registered trade marks.
The Complainant's trade marks are featured on the Internet, in press releases, on company stationery and in magazines and journals. In 2007, the Complainant spent over $1.4 billion worldwide in promoting the trade marks.
The disputed domain name is confusingly similar to the Complainant's trade marks. The Complainant contends that “google” is not a word in the common English language – rather it is a distinctive word which would not have been chosen by the Respondent unless it was attempting to trade off the Complainant's right in the Google trade marks.
“Google” is the dominant portion of the disputed domain name, and consumers will immediately make an association with the Complainant. The only difference between the Complainant's trade marks and disputed domain name is the addition of the letter “r” at the end of the word. This gives the impression that “googler” is a sub-branch of the Google operation which will be confusing and misleading for consumers. Similarly, “Googler” may suggest a person who uses the GOOGLE search engine, and suggests a connection with the Complainant.
The Respondent is not commonly known by the disputed domain name. A search of Australian telephone directories and business name registers does not return any relevant results. While the Respondent filed two Australian trade mark applications for “googler” on December 2, 2003, they were not accepted by the Australian trade marks office, and this is most likely because the Complainant's trade marks have been cited against it. These trade mark applications have lapsed.
There is no evidence that the Respondent is using or has used the disputed domain name in connection with any bona fide offering of goods or services. The Respondent operates a blog from the disputed domain name.
The Respondent is not making a legitimate fair use of the disputed domain name, but is using it to intentionally divert traffic from the Complainant's websites and mislead Internet users into assuming some connection exists between the Respondent's website and the Complainant.
The Complainant contends that “google” is an invented, distinctive word which the Respondent would not have legitimately chosen as the major element of its domain name unless it was attempting to trade off the Complainant's rights. The Complainant's reputation in GOOGLE is so widespread that it is inconceivable that the Respondent did not have actual notice of the Complainant's rights in the trade marks at the time of registering the disputed domain name.
The Respondent has intentionally attempted to attract Internet users familiar with the Complainant and its services, to create confusion as to the existence of an affiliation, endorsement or other connection with the Complainant.
The Complainant's registered trade marks date back to 1998, which is five years prior to the Respondent registering the disputed domain name (in 2003). This is further evidence of bad faith.
The Complainant first became aware that the Respondent was registering domain names containing the term “googler” in 2004. On August 2, 2004, a letter of demand was sent to the Respondent requesting the transfer of the disputed domain name to the Complainant (among other things). The Respondent advised that he would require some consideration for the transfer, and asked the Complainant to make a reasonable offer. The exact wording used by the Respondent was “some form of incentive (whatever form that might take) for certain negotiated rights to my assets” and “commercially realistic offer”. This is clear evidence of bad faith.
B. Respondent
The Respondent makes the following contentions:
The Complainant has not provided any proof to satisfy the conditions of paragraph 4(a)(i) of the Policy.
The Respondent has and always did have a legitimate interest in the disputed domain name as a platform for his research and general interests. The disputed domain name was acquired and operated to increase the Respondent's understanding of the Internet and entities who use it.
The disputed domain name was not registered or used in bad faith.
6. Previous proceedings
The Respondent makes reference to a previous decision which also concerned the Complainant and the Respondent (Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd,
WIPO Case No. D2008-0994), and seeks to rely on the response filed in that matter. (While the Respondent was not the official respondent in the earlier case, he did act as the respondent's representative, and the Panel infers that the two respondents are in fact related, if not the same, entities.)
The Respondent comments on the decision in
WIPO Case No. D2008-0994, in case the Panel wishes to use it as a “precedence for the Panel's decision in the current matter”. The Respondent's main argument seems to be that the Complainant failed to meet its burden of proof in respect of paragraph 4(a)(i) of the Policy, yet was still successful in its earlier complaint.
Once a panel renders a decision, it is usually the end of the procedure. This is not the appropriate forum for the Respondent to raise its concerns with a prior decision even if it did involve the same parties. The Panel is not privy to the Complaint in that case and is therefore not in a position here to make any comment on the Respondent's assertions. The previous decision also concerned a range of domain names which contained the term “googler” in addition to other words. As this case involves the term “googler” alone, and is filed under a different set of dispute resolution rules, it must be treated as a separate case.
The Panel has accordingly considered the issues in this current dispute, on their own merits, on the case record before it.
As mentioned above, the Respondent seeks also to rely on the response filed in the previous proceedings which was submitted as an annex to the current Response. The difficulty with this is that the response is directed to a different set of domain names and will not be entirely applicable to these proceedings. However, to the extent the response includes general statements which are relevant to this matter, the Panel has taken that response into account. The main theme of the Respondent's previous response, is that through common use of “googling” as a verb, other terms derived from Google, such as “googler” have become new words in the English language, rather than an infringement of the GOOGLE brand and trade marks.
Finally, the Panel also notes the Respondent's claim that the Complainant acted questionably in filing its first complaint against the Respondent on the day it was made aware that the Respondent had a serious illness and then filing a second complaint (relating to this proceeding) a week later. A decision under the Policy requires the Panel to consider three specific elements. The Respondent's claims regarding the Complainant's conduct is not relevant to any of these elements, and therefore will not be commented on by the Panel.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
(i) that the disputed domain name is identical or confusingly similar to a name, 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; and
(iii) that the domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered trade mark rights in Australia for the term GOOGLE. The Complainant owns three Australian registered marks for the word mark GOOGLE and one registered mark for the GOOGLE logo, in a range of classes including for computer software, printed matter, clothing, advertising services, financial services, and telecommunications and computer services. These marks were filed by convention in Australia, and the priority date for the earliest of these registrations is September 1998.
The disputed domain name contains the Complainant's registered trade mark in its entirety, which in many cases is enough to create sufficient similarity between the domain name and the trade mark to create a likelihood of confusion (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com,
WIPO Case No. D2002-0313). The only difference between the Complainant's trade mark and the disputed domain name (ignoring the .com.au suffix), is the addition of the letter single “r”. The term “googler” is in the Panel's view, confusingly similar to “Google”. The Panel further notes that the GOOGLE trade mark and brand is extremely well-known.
The Respondent makes a mere assertion that the Complainant has not provided any proof to establish this first element. However, the Complainant has provided sufficient evidence of its registered trade mark rights (including copies of trade mark certificates), and has presented persuasive arguments as to why the disputed domain name is confusingly similar to its marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Bona fide use of domain name - paragraph 4(c)(i)
The website operating from the disputed domain name is a blog, titled the “googler.com.au blog.” I know the answer, but forgot the bloody question”. There is commentary on a wide range of issues, largely relating to Australian current affairs, which Internet users can comment on. On this website, the Respondent has also referred to the outcome of the previous UDRP decision, and the status of these proceedings.
In some circumstances use of a website for a current affairs blog may very well amount to a bona fide use of a domain name. However in this case there is overwhelming evidence that GOOGLE is an invented, distinctive word which is well-known as a trademark throughout the world, particularly to those interested in the Internet. The Panel believes that it is very unlikely that the Respondent, who is clearly interested in search engines and websites, legitimately decided on the term “googler” without any reference to the Complainant's valuable brand.
The Panel therefore infers that the Respondent knew of the Complainant's reputation in the GOOGLE trade marks and brand, and chose to register the disputed domain name in order to attract Internet users to its website.
Such use cannot constitute a bona fide offering of goods of services and is therefore inconsistent with any claims of rights or legitimate interests (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International,WIPO Case No. D2003-0664).
Commonly known by domain name
The Complainant has put forward a strong case that the Respondent is not commonly known by “googler” or any similar term. The Respondent has attempted to register trade marks for the term “Googler” in the past. All of these attempts have proved unsuccessful and two of the earlier trade mark applications have since lapsed.
The Respondent still has one Australian trade mark application currently pending for “Googler” in class 41 for online publication services. An adverse report has been issued by the Trade Marks Office in relation to the Respondent's mark. Given the similarity between the Complainant's GOOGLE trade marks and the Respondent's Googler trade mark, and the services claimed by the Respondent (which are similar to the Complainant's core services), the Panel thinks it likely that the Respondent's mark has been or will be rejected on the basis of the Complainant's earlier registered marks. In any event, the Respondent's pending and later-filed trade mark application is of itself not sufficient to demonstrate that the Respondent is commonly known by the disputed domain name in these proceedings.
The Respondent has not provided evidence sufficient to overcome the Complainant's prima facie case in this regard.
Legitimate non-commercial or fair use
As mentioned above, the website operating from the disputed domain name is primarily used as a blog. There are circumstances where use of a website to publish a blog could be considered non-commercial or fair use, however the Panel does not believe that is the case in these proceedings.
There are currently no advertisements on the website, however under a heading of “Favourite Links”, there is a link to “advertise on this website”. Clicking on this link brings up an automatic email to the website operator, whereby presumably a user can enquire about advertising.
The commentary on the website dates back to July 2006. The first entry in the archives for this month reads: “Become an officially recognized friend of <googler.com.au> for AUD$20.00”. There is no explanation about what this money would be used for, or what a “recognized friend” would receive in return.
The Panel infers from these two statements that the Respondent has at least attempted to use this site as a commercial website.
Also, as mentioned above, the Panel has inferred that the Respondent knew of the Complainant's rights in GOOGLE and intentionally chose a domain name which contained this well-known brand. Such acts cannot constitute legitimate non-commercial or fair use.
Conclusion
The Respondent claims that he has a legitimate interest, in that he uses the disputed domain name for research purposes and general interest. However this cannot be legitimate if the Respondent chose the disputed domain name for its similarity to the Complainant's mark and likely popularity with Internet users. It is clear that the Respondent was aware of the Complainant's GOOGLE marks, as he wrote to the Complainant asking if they would object to his registration of various “googler” domain names.
The Respondent's argument appears to be that there are at least two meanings for the term “Google”, namely, GOOGLE being the search engine, trade mark and brand belonging to the Complainant, and “google” being a verb to search the Internet via the GOOGLE search engine. When using the latter term, the search engine may be, but does not have to be, GOOGLE. The Respondent provides examples which he claims to be analogous – such as FORD (the brand for cars) and ford (a water crossing). In the Panel's view, the Respondent's reasoning is flawed, primarily because the second meaning for the term “google” (its meaning as a verb), originated from the invented name GOOGLE. The clear difference in the “Ford/ford” example is that “ford” meaning a water crossing, did not derive its name from the brand name Ford. Also, the two meanings for Ford/ford relate to completely separate subject matter, while the two meanings for GOOGLE are inextricably linked. In any event, a person will not necessarily be permitted to register a domain name which is confusingly similar to FORD, despite the fact that ford has a descriptive meaning. The critical question in such cases seems to be whether the Respondent registered the domain name because of its trademark value or its descriptive value; and in the present matter, the Panel believes the former is more likely.
The Complainant has presented a strong case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has failed to provide any evidence to overcome this.
Accordingly, the second element has been met.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.
Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
Again, the Respondent makes a mere assertion that the disputed domain name was not registered or used in bad faith, but provides no evidence to support that statement. The Respondent admits in his previous response that he “has always been acutely aware of the Complainant's trade mark”.
The Panel agrees with the Complainant's argument that many Internet users may think the disputed domain name is a sub-brand of Google's operations. The Panel is not persuaded by the Respondent's contention that “google” is a common, well known term in the context of the content of the Respondent's website blog. In any event, if it were, it is not clear that this would necessarily assist the Respondent in these proceedings. That is because at core, this Panel doubts that the Respondent chose the disputed domain name for reasons related to anything other than an intent to trade off Complainant's trademark.
Based on the evidence provided to it, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to affiliation of its products or services.
In correspondence between the parties prior to the commencement of these proceedings, the Respondent stated that “I am open to commercially reasonable offers”, and then further correspondence stated “it was an offer to discuss, collaborate and/or be open to commercially realistic offers…I will therefore, one final time, repeat my offer to you and your client to actively consider a commercially realistic offer”. The final piece of correspondence from the Respondent on this issue states “A commercially realistic offer, in that context, could therefore conceivably consist of a collaborative scenario where some or all of the assets in question are jointly utilized (or utilized exclusively by your client) for a shared reward scenario. Another option might be that your client exchanges some form of incentive (whatever form that might take) for certain negotiated rights to my assets … It would be my intent to be very flexible in such discussions. Finally I'd be happy to discuss and consider any other options that your client chooses to place before me; even if they are not explicitly covered here”. This is further evidence of bad faith on the part of the Respondent..
As such, the third element has been met.
8. 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, <googler.com.au> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: October 20, 2008
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