WIPO Domain Name Dispute Case No.D2009-1675 by jianghongl

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									                   WIPO Arbitration and Mediation Center



                               ADMINISTRATIVE PANEL DECISION



                                  Google Inc. v. xeo, Xeocook



                                      Case No. D2009-1675




1.   The Parties



     The Complainant is Google Inc. of California, United States of America, represented by Ranjan
     Narula Associates, India.



     The Respondent is xeo, Xeocook of Hanoi, Viet Nam.




2.   The Domain Name and Registrar



     The disputed domain name <quangcaogoogle.org> is registered with Directi Internet Solutions
     Pvt. Ltd. d/b/a PublicDomainRegistry.com.


                                             page 1
3.   Procedural History



     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on December 8, 2009. On December 10, 2009, the Center transmitted
     by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a
     request for registrar verification in connection with the disputed domain name. Later
     the same day, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
     transmitted by email to the Center its verification response confirming that the
     Respondent is listed as the registrant and providing the contact details. The Center
     verified that 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
     December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for
     Response was January 6, 2010. The Respondent did not submit any response.
     Accordingly, the Center notified the Respondent’s default on January 7, 2010.

     The Center appointed Rodrigo Azevedo as the sole panelist in this matter on
     January 20, 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.



     Due to unanticipated exceptional circumstances, the Panel extended the due date for
     submission of the Decision to the Center to February 10, 2010.




4.   Factual Background



     The Complainant, Google Inc., is a North American corporation 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.

                                           page 2
     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.



     The disputed domain name was created on April 8, 2009.



     On October 1, 2009 the Complainant sent a warning letter referring to its rights
     concerning the disputed domain name, addressed to the domain name holder at that
     time.



     On October 4, 2009 the disputed domain name was transferred to the Respondent.



     The Panel accessed the webpage placed at the disputed domain name on
     February 10, 2010. It consisted of a reproduction of another website related to real
     state advertising, architecture and design (called “TapchiDiaOc”, which is also
     available at <tapchidiaoc.net>).




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 a multi-billion dollar company. Its
           primary website “www.google.com” is one of the most used search engines in
                                          page 3
        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. The Complainant has obtained trademark
        registrations for its mark GOOGLE worldwide and is the owner of several other
        domain names composed of the expression “google”.



(ii)    The Complainant became aware of the disputed domain name in
        September 2009. On October 1, 2009, the Complainant sent a warning letter to
        the domain name holder at that time. On November 25, 2009, a new search of
        the “WhoIs” database was performed by the Complainant and showed the
        present Respondent as the registrant of the domain name. The Complainant
        tried to reach the Respondent, who refused to provide any information.
        Subsequently, the Respondent sent an e-mail offering the domain name for sale.



(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 “quang cao”
        (which means “advertising” in Vietnamese).



(iv)    The Respondent has no rights or legitimate interests in respect of the disputed
        domain name. That is because the GOOGLE mark is so well-known around the
        world that there is no credible legitimate reason for the Respondent to have
        registered that domain name. Furthermore, the Complainant indicates that the
        Respondent’s purpose in registering the disputed domain name was to use the
        notoriety of the GOOGLE mark to generate web traffic and to confuse Internet
        users. The Complainant has not licensed or otherwise permitted the
        Respondent to apply for or use the disputed domain name. The Respondent is
        not commonly known by a name or nickname relating to the GOOGLE mark.



(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 choice of the word “quang cao” to compose the
        domain name in conjunction with the Complainant’s trademark GOOGLE was
        made to convey to Internet users that the corresponding website was part of the
        Complainant’s business. Also, the Registrant has refused to comply with the
        Complainant’s demands regarding transfer of the domain name, showing
        unwillingness to resolve the matter amicably – which demonstrates bad faith
        registration.

                                       page 4
     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 to submit a formal reply, the Panel shall consider
     whether the requirements of the Policy have been met.

     A.    Identical or Confusingly Similar



     Annex 6 to the Complaint demonstrates registrations of the GOOGLE trademark in the United
     States of America since 1997.



     Furthermore, the Complainant annexed a list of trademark registrations and/or applications
     including the GOOGLE mark in several countries.



     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.



                                               page 5
    The trademark GOOGLE is wholly encompassed within the disputed domain name, which also
    includes the expression “quang cao”. According to “www.vdict.com”1, an online dictionary
    (Vietnamese - English), “quảng cáo” means “to advertise, to publicize”. Consequently, the
    Panel concludes that the addition of the expression “quang cao” is not sufficient to dispel the
    confusing similarity between the disputed domain name and the Complainant’s trademark,
    required under paragraph 4(a)(i) of 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 noncommercial or fair use of the
                domain name without intent for commercial gain to misleadingly divert
                consumers or to tarnish the trademark at issue.

    As it is often very difficult to a complainant to prove that a respondent has no legitimate
    interests in a domain name (as this can involve the Complainant being required to prove a
    negative), it is considered enough that the complainant establishes a prima facie case which
    evidences that. In a previous WIPO UDRP case, the panel stressed that “once Complainant



1
    http://vdict.com/index.php

                                             page 6
makes a prima facie showing, Respondent must submit concrete evidence of at least
demonstrable preparations in order to rebut Complainant’s showing that Respondent has not
used, nor does it plan to use, the domain name in connection with the bona fide sale of goods
or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270).

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the
Panel finds 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 word “google”.

The website operating under the disputed domain name does not suggest any justification for
using such well-known trade mark. This conclusion clearly arises as the word “google” does
not mean anything in English or in Vietnamese.

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
                                         page 7
                 creating a likelihood of confusion with the complainant’s mark as to the source,
                 sponsorship, affiliation, or endorsement of its website or location or of a product
                 or service on its web site or location.



     The registration of the disputed domain name occurred in 2009, 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 it
     registered the disputed domain name.



     The Panel is convinced that the addition of the expression “quang cao” (“to
     advertise”) to the trademark GOOGLE was intentionally made in order to convince
     consumers that the website was related to the Complainant’s own business, creating a
     likelihood of confusion as to the source of the services offered under the disputed
     domain name. This clearly constitutes bad faith in the view of this Panel.



     The website published at the disputed domain name includes real state advertising.
     Therefore by, using the word “google” as part of the disputed domain name, the
     Respondent could benefit by attracting the Complainant’s consumers and also by
     endorsing its own services by the suggested association with such a well-known
     trademark.



     The transference of ownership of the disputed domain name just after receiving a warning
     letter from the Complainant and the subsequent offer to sell the domain name are also
     additional evidence of bad faith.



     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 disputed domain name
     <quangcaogoogle.org> be transferred to the Complainant.




                                              page 8
    Rodrigo Azevedo

      Sole Panelist



Dated: February 10, 2010.




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