The Complainant is Google, Inc, Mountain View, California, of United States of America, represented by Rose A. Hagan, United States of America.
The Respondent is Mohammad Jabbari, Rafsanjan of Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <google.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2005. On January 10, 2005, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On January 11, 2005, IRNIC 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. The Center verified that the Complaint satisfied the formal requirements of the “.IR” Domain Name Dispute Resolution Policy (the “Policy”), the Rules for “.IR” Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for “.IR” 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 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2005. The Response was filed with the Center on January 28, 2005.
The Center appointed Peter G. Nitter as the Sole Panelist
in this matter on February 4, 2005. 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
Complainant has documented that it is the owner of trademark registrations for the mark GOOGLE in various countries around the world. Complainant is furthermore the owner of a large range of domain name registrations consisting of “google” with the addition of various generic and country code top level domains.
Respondent has registered and used the domain name
at issue.
5. Parties’ Contentions
A. Complainant
The domain name at issue is identical to Complainant’s registered trademarks.
Respondent has no rights or legitimate interests in the contested domain name.
Respondent has used the contested domain name to offer
a search engine that mimics Complainant’s search engine, and this does
not constitute a bone fide offering of goods and services. According to previous
Panel decisions (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com",
WIPO Case No. D2000-0847), use which intentionally
trades on the fame of another can not constitute a bona fide offering
of goods and services.
Respondent is not and has not been commonly known by the disputed domain name. As the domain name at issue is identical to Complainant’s trademark, any renown the Respondent may have gained from it extends entirely from the goodwill associated with Complainant’s mark.
Respondent is neither making a legitimate, non-commercial use of the domain name at issue without the intention to mislead and divert consumers or to tarnish Complainants GOOGLE mark. On the contrary, Respondent operates a search engine that trades on Complainant’s worldwide reputation, without Complainant’s consent.
Respondent has registered and used the domain name at issue in bad faith.
Respondent’s registration and use of the contested
domain name precisely parallel the circumstances described in the IRDRP Section
4(b)(i), and require a finding of bad faith registration. Respondent registered
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the Complainant who is the owner of the corresponding
trademark, or to a competitor of Complainant, for valuable consideration in
excess of his documented out of pocket costs directly related to the domain
name. Respondent has demanded that Complainant provide him with $1 million in
AdWords credits in exchange for the transfer of the domain name at issue.
Respondent can offer no justification, excuse or plausible explanation for his registration of the domain name at issue, apart from the ones mentioned above. Due to the fame of Complainant’s mark GOOGLE, Complainant must have been aware of Complainant’s right at the time of the registration and use of the domain name at issue.
B. Respondent
Respondents asserts that he registered the domain name at issue because of his “personal interest [in] having (not using) this domain name”. Respondent holds that he has not been into selling the domain name for any price.
Respondent has explained that he was contacted by a person living in Canada, who asked Respondent to have the domain name at issue for a short time without any charge in order to establish a website. Respondent holds that he let said person have the domain name at issue for some time for free, and that it was this person who established a website imitating Complainant’s famous search engine, and offered to sell the domain name to Complainant.
Respondent states that he wants to keep the ownership
in the contested domain name, as it is under the Iranian country code top level
domain, and because Respondent is himself an Iranian national.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is identical to Complainant’s trademark GOOGLE.
B. Rights or Legitimate Interests
Respondent has asserted that the domain name at issue was registered purely because Respondent wishes to hold the domain name passively, without using it.
A wish to passively hold a domain name corresponding to a world famous trademark such as Complainant’s mark GOOGLE, is not, in the opinion of the Panel, a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case Complainant has also documented that the domain name at issue on the contrary actually has been used in connection with a website, which both misleadingly diverted Complainant’s customers, and tarnished Complainant’s trademark. Respondent’s assertion that these actions were carried out by an independent person who lent him the domain name at issue for free is in conflict with Respondent’s other assertion, that he did not intend to use the domain name.
Apart from the above assertion, Respondent has not made any claims as to its rights and legitimate interests in the domain name, nor has the Panel in any other way become aware of facts that indicates any rights or legitimate interests on the hand of Respondent.
Complainant has asserted that it has not granted Respondent any rights in its GOOGLE mark, but it is generally difficult for it to prove the negative that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has however filed a Response, and has had ample opportunities of documenting any possible rights and legitimate interests in the domain name at issue, without making use of such opportunities.
As a result of the above, the Panel finds that Complainant has sufficiently proven that Respondent does not have any rights and legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
As a result of the fame of Complainant’s trademark GOOGLE, it is inconceivable to the Panel that Respondent has not been aware of Complainant’s rights in this mark at the time of the registration of the domain name at issue.
Respondent has not offered any explanation for his registration of the disputed domain name except that he wished to hold the domain name, without using it. Despite Respondent’s assertion, Complainant has documented that the domain name at issue has indeed been used in relation to activities that in the opinion of the Panel falls in under more than one of the exemplifications of activities indicating bad faith use, set out in the IRDRP Section 4(b) during the time it has been registered with the Respondent.
The Panel places little confidence in Respondent’s explanation that he let a stranger use the domain name for free in order to set up an Internet-site, without Respondent asking any further questions or checking what the domain name was used for.
Even if Respondent’s explanation is correct, Respondent’s registration
of the disputed domain name for the purpose of passive holding, is in the view
of the Panel a bad faith registration and use in relation to paragraph 4 of
the IRDRP. As established in previous Panel decisions, such as Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003, inaction should never itself constitute evidence of
registration and use in bad faith, but may do so where there is no obvious justification
for the selection of the domain name at issue, where the Respondent has not
sought to put before the Panel any credible justification for selection of the
domain name at issue, and where it is difficult to conceive of any use of the
domain name, which will not be likely to cause confusion of some kind.
The Panel finds that those circumstances exist here. The disputed domain name can only sensibly refer to the Complainant, there is no obvious possible justification for the Respondent’s selection of the domain name, the Respondent has not sought to put before the Panel any justification for its selection of the domain name and it is difficult to conceive of any use of the domain name, which will not be likely to cause confusion of some kind. In the Panel’s view the threat that such use may be made of the domain name constitutes use in bad faith.
As a result of the above, the Panel finds that the domain name at issue was
registered and has been 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, <google.ir> be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: February 21, 2005
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