Google Inc. v. Comunicus Lda
Claim Number: FA0204000110785
Complainant is Google Inc., Mountain View, CA, USA (“Complainant”) represented by Julia Anne Matheson, of Finnegan Henderson Farabow Garrett & Dunner LLP. Respondent is Comunicus Lda, Porto, PORTUGAL (“Respondent).
The domain name at issue is <<google.biz>>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 23, 2002; the Forum received a hard copy of the Complaint on April 24, 2002.
On April 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 14, 2002.
On June 7, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M. Wallace, Q.C., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant Google is a California corporation. Google was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, Google has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at <google.com>.
Currently, the GOOGLE search services have an index of over 2 billion web pages, and respond to more than 100 million search queries per day. The GOOGLE search services offer Internet users an easy-to-use interface, advanced search technology, and a comprehensive array of search tools. In addition, the GOOGLE search services allow Internet users to search for and find content in many different languages; access stock quotes, maps, and news headlines; access telephone book listings for every city in the United States; retrieve more than 18 million .PDF documents; and access the world’s largest archive of Usenet messages, more than 650 million dating from 1995.
Google’s website is one of the most popular destinations on the Internet. For example, Nielsen NetRatings ranked Google as number 5 of the Top 25 Web Properties for the week of April 14, 2002. Google offers interfaces of its GOOGLE website in over 74 languages, including Portuguese (located at the URL http://google.com/intl/pt/) (“Google’s Portuguese Website”).
In addition, Google operates websites at numerous ccTLDs, including <google.co.uk> (United Kingdom), <google.com.br> (Brazil), <google.com.ar> (Argentina), <google.fr> (France), <google.ch> (Switzerland), <google.ca> (Canada), and <google.co.jp> (Japan).
Google has consistently been honored for its technology and its services, and has received numerous industry awards, including the following recent awards:
M.I.T. Sloan eBusiness Award - M.I.T. Students’ Choice (April 2002)
Russian Online TOP - Best Foreign Web Site of the Year (April 2002)
2001 Search Engine Watch Awards - Outstanding Search Service, Best Image Search Engine, Best Design, Most Webmaster Friendly Search Engine, Best Search Feature (February 2002)
PC Magazine - Top 100 Web Sites (October 2001)
Webby Award for Best Practices (July 2001)
PC World’s World Class Awards 2001 - Best Search Engine (May 2001)
The Net Awards 2001 - Best Site (May 2001)
Forbes Favorite - Best of the Web (May 2001)
PC Magazine - Top 100 Web Sites: Search and Reference (March 2001)
Google also offers co-branded web search solutions for information content providers, and has partnerships with 130 companies in more than 30 different countries, including some of the Internet’s most prominent players, such as: Yahoo! Inc.; Palm; Nextel Online; Netscape; Cisco Systems; Virgin Net; Netease.com; RedHat; Virgilio; Earthlink; and Washingtonpost.com.
In addition to being accessible from desktop PCs, Google’s adaptable, highly scalable search technology can also be accessed from all major wireless platforms, such as WAP and i-mode telephones, handheld devices such as the PALM handheld PC, and Internet appliances. As a result of Google’s mobile partnerships, customers of AT&T Wireless, Cingular Wireless, Sprint PCS, Handspring, Vodafone, and Yahoo! Inc. can access Google’s 2 billion Internet web pages through their telephones and/or other wireless devices.
Google also offers software and hardware products. The GOOGLE Toolbar is a free, downloadable software program which appears as a toolbar along with the Internet Explorer toolbar and which allows users to quickly and easily use Google’s search services from any website location, without having to return to Google’s home page to begin another search. The GOOGLE Search Appliance is an integrated software and hardware product, marketed to both small and large companies, that provides Google’s search services, including indexing, for use in internal corporate networks and intranets.
The GOOGLE mark identifies Google’s award-winning, propriety, and unique search services, search engine technology, and associated services. Having been widely promoted among members of the general consuming public since 1997, and having exclusively identified Google, Google’s GOOGLE mark and name symbolize the tremendous goodwill associated with Google and are property rights of incalculable value. Furthermore, due to widespread and substantial international use, Google’s GOOGLE mark and name have become famous.
Google is the owner of United States trademark applications for the mark GOOGLE, including the following representative examples:
a. Application Serial No. 75-554461, filed September 16, 1998, covering computer hardware and software in International Class 9.
b. Application Serial No. 75-978469, filed September 16, 1998, covering search and communication services in International Classes 38 and 42.
Google is the owner of trademark registrations for the GOOGLE mark issued in various countries throughout the world, including the following registrations:
a. Australian Registration No. 788234, filed March 12, 1999, issued March 12, 1999, covering goods and services in International Classes 9, 38, and 42.
b. Canadian Registration No. TMA539576, filed March 30, 1999, issued January 12, 2001, covering computer hardware; computer software for searching, compiling, indexing and organizing information within individual workstations, personal computers or computer networks; computer software for electronic mail and facilitating workgroup communications over computer networks; computer software for creating indexes of information, web sites or other resources; computer services, namely on-line personalized information services; information extraction and data mining; providing access to proprietary collections of information; creating indexes of information, web sites and other information sources; providing information concerning a wide range of text, electronic documents, databases, graphics and audiovisual information; providing electronic mail and workgroup communications services.
c. Chinese Registration No. 1,473,896, filed March 16, 1999, issued November 14, 2000, covering goods and services in International Class 9.
d. Hong Kong Registration No. 16817/1999, filed March 13, 1999, issued September 16, 1998, covering goods and services in International Class 9.
e. Israeli Registration No. 126,479, filed March 14, 1999, issued May 10, 2000, covering goods and services in International Class International Class 42.
f. Japanese Registration No. 4478963, filed March 12, 1999, issued June 1, 2001, covering goods and services in International Classes 9 and 42.
g. Mexican Registration No. 622722, filed March 15, 1999, issued September 17, 1999, covering goods and services in International Class 9.
h. New Zealand Registration No. 306520, filed March 15, 1999, issued September 16, 1998, covering goods and services in International Class 42.
i. Russian Federation Registration No. 191,819, filed March 15, 1999, issued August 2, 2000, covering goods and services in International Classes 9 and 42.
j. Swiss Registration No. 470018, filed March 12, 1999, issued March 12, 1999, covering goods and services in International Classes 9, 38, and 42.
Google owns the domain name <GOOGLE.COM>, which was registered on September 15, 1997 and which has been used to identify Google’s website since on or about that date.
Google’s trademark rights (in its GOOGLE mark, based on its trademark filings in the United States and elsewhere throughout the world, and on its common law rights under United States law acquired through the extensive use of the GOOGLE mark, trade name, and domain name) long predate Respondent’s registration of the domain name <GOOGLE.BIZ> on March 27, 2002.
Respondent is the registrant of the domain names <GOOGLE.PT> and <GOOGLE.COM.PT>, which Respondent uses for a virtually identical copy of Complainant’s Portuguese Website without Complainant’s authorization. Respondent has copied Complainant’s Portuguese Website for some time, including the time prior to applying for and registering the domain name <GOOGLE.BIZ>.
A side by side comparison of Complainant’s Portuguese Website and Respondent’s <GOOGLE.PT> website shows there are only two differences between the websites. Respondent’s website removed the link to the GOOGLE Toolbar (“A maior ferramenta de busca desde o próprio Google. Experimente a Barra de Ferramentas Google.”). Respondent added three links to its email services offered at the domain names <GOOGLE.PT> and <GOOGLE.COM.PT> (“Acesso ao email, Abrir conta (Google.pt), Abrir conta (Google.com.pt)”). The web page through which Respondent’s customers access their email (“Acesso ao email”) again prominently displays Complainant’s GOOGLE logo without Complainant’s authorization. The other two links (Abrir conta (Google.pt>) and Abrir conta (Google.com.pt)”) invite users to open an email account with Respondent.
As of April 22, 2002, Respondent used the domain names <GOOGLE.PT> and <GOOGLE.COM.PT> for a website located at <mail.google.pt>, which again is a nearly identical replica of Complainant’s Portuguese Website.
Respondent is using Complainant’s GOOGLE mark and logo to identify Complainant’s services, and to falsely suggest to Internet users that Complainant offers, sponsors, and/or is affiliated with Respondent’s email services offered at the domain names <GOOGLE.PT> and <GOOGLE.COM.PT>. Despite those facts, which amply demonstrate the willfulness of Respondent’s infringement, Respondent filed a trademark application to register the mark GOOGLE in Portugal. Complainant filed an opposition to Respondent’s application, and the opposition is currently pending before Portugal’s Trademarks Office.
Respondent has a history of usurping the marks of third parties by filing trademark applications in Portugal, presumably in a transparent attempt to legitimatize Respondent’s infringements of those marks. For example, on January 26, 1999, Respondent filed an application to register the stylized mark YAHOO!, which was an exact copy of the famous YAHOO! mark owned by Yahoo! Inc. Portugal’s Trademarks Office declined to grant Respondent’s application based on the legal concepts of imitation and unfair competition.
Respondent had actual knowledge of Complainant’s rights in its GOOGLE mark when Respondent registered the domain name <GOOGLE.BIZ>. In addition to having prior knowledge of Complainant’s rights, Respondent received, in response to its application for the Domain Name, Neulevel’s Notification of .BIZ Intellectual Property Claim Conflict alerting Respondent to Complainant’s trademark rights.
Respondent’s ongoing infringement of Complainant’s GOOGLE mark via the domain names <GOOGLE.PT> and <GOOGE.COM.PT> make it clear that Respondent registered the domain name <GOOGLE.BIZ> with the intention of infringing Complainant’s rights by using the Domain Name to improperly duplicate Complainant’s website, to offer email services under Complainant’s mark without authorization, and/or to trade on Complainant’s substantial goodwill for commercial gain.
Respondent is not currently using the domain name <GOOGLE.BIZ> for a website. However, Respondent’s registration alone and/or future use of the domain name <GOOGLE.BIZ> is likely to confuse Internet users into mistakenly believing that Respondent and/or its website are offered, authorized, or sponsored by Complainant; or is otherwise connected, associated, or affiliated with Complainant.
If Respondent is allowed to retain ownership of the domain name <GOOGLE.BIZ>, Respondent will be able to use it to further infringe Complainant’s famous GOOGLE mark; Internet users will be confused and deceived; Respondent will be able to profit from its misuse of Complainant’s GOOGLE mark; and Complainant’s partnerships and reputation will be harmed.
Pursuant to Section 4(c)(i) of the STOP Policy, Respondent does not own and is not the beneficiary of a trademark or service mark that is identical to the Domain Name. Respondent’s Portuguese Trademark Application fails to establish any legitimate right of Respondent to the domain name <GOOGLE.BIZ> for two reasons. First, Respondent’s use of the GOOGLE mark completely relies upon the fact that the mark belongs to Complainant, and in no way independently identifies Respondent’s services. Second, Respondent cannot justify its misappropriation of a famous registered trademark in a domain name simply because it filed a trademark application. If such were the case, cybersquatters such as Respondent could freely pirate the trademarks of others as domain names simply by filing trademark applications. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that Respondent’s trademark applications failed to establish Respondent’s legitimate interest in the disputed domain name); see also Pioneer Hi-Bred Int’l, Inc. v. Ingescom, D2001-0202 (WIPO May 22, 2001) (same); see also Am. Online, Inc. v. Go2Morth.com, Inc. D2000-0810) (WIPO Dec. 15, 2000) (same); see also Biogen, Inc. v. SRI Tech Consulting, Inc. D2001-0444 (WIPO June 27, 2001) (same).
Pursuant to Section 4(c)(ii) of the STOP Policy, Respondent is not and has not been commonly known by the Domain Name.
Pursuant to Section 4(c)(iii) of the STOP Policy, Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services. See Huawei Techs. Co. v. Tianping FA 102793 (Nat. Arb. Forum Feb. 14, 2002) (finding no legitimate interest under the STOP Policy when the disputed domain name is identical to the Complainant’s famous mark and capitalizes on the Complainant’s goodwill for the Respondent’s commercial gain); see also Continental Airlines, Inc. v. Coldwell Banker Burnet FA 102796 (Nat. Arb. Forum Feb. 6, 2002) (same); see also Guess? Inc. v. Joo FA 102949 (Nat. Arb. Forum Jan 31, 2002) (same); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods and services.”); see also Chanel, Inc. v. Cologne Zone D2000-1809 (WIPO Feb. 22, 2001) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
Respondent’s ongoing infringement of Complainant’s GOOGLE mark via the domain names <GOOGLE.PT> and <GOOGLE.COM.PT> proves that Respondent has no legitimate interest in the domain name <GOOGLE.BIZ>, and that Respondent registered the domain name <GOOGLE.BIZ> solely for its association with Complainant’s GOOGLE mark. See Twentieth Century Fox Film Corp. v. Rogan FA 102952 (Nat. Arb. Forum Feb. 15, 2002) (finding no legitimate interest when the Respondent’s entire interest in the domain name derives solely from the Complainant’s mark, and finding the Respondent’s prior infringements evidence its bad faith intention to trade off of the Complainant’s goodwill).
Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(ii) of the STOP Policy. Specifically, Respondent registered the Domain Name in order to prevent Complainant from reflecting its famous GOOGLE mark in the corresponding .BIZ domain name. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding the Respondent’s registration of the domain name with knowledge of the Complainant’s rights was in bad faith because the Respondent intended to prevent the Complainant from reflecting its mark in a domain name); see also Brantano NV v. Amiso SA FA 102812 (Nat. Arb. Forum Feb. 25, 2002) (same); see also Guess? Inc. v. Joo FA 102949 (Nat. Arb. Forum Jan 31, 2002) (same).
Respondent’s registration of the Domain Name meets the bad faith element set forth in Section 4(b)(iv) of the STOP Policy. Specifically, Respondent registered the Domain Name with the intention of using it to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s famous GOOGLE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s future website and/or online activities associated with the Domain Name. See Huawei Techs. Co. v. Tianping FA 102793 (Nat. Arb. Forum Feb. 14, 2002) (finding the Respondent registered the domain name in bad faith because it is likely to be falsely associated with the Complainant); see also Evli Bank Plc v. Evli FA 102950 (Nat. Arb. Forum Feb. 12, 2002) (same); see also Continental Airlines, Inc. v. Coldwell Banker Burnet FA 102796 (Nat. Arb. Forum Feb. 6, 2002) (finding the Respondent registered the domain name in bad faith because the Respondent’s registration of the domain name “will inevitably create a likelihood of confusion”).
Respondent’s registration of the Domain Name was in bad faith because Respondent had knowledge of Complainant’s rights in its famous GOOGLE mark. See Brantano NV v. Amiso SA FA 102812 (Nat. Arb. Forum Feb. 25, 2002) (finding the Respondent registered the domain name in bad faith because it was on notice of the Complainant’s rights); see also Guess? Inc. v. Joo FA 102949 (Nat. Arb. Forum Jan 31, 2002) (same); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (same); see also Pelephone Communications Ltd. v. Weisberg FA 102792 (Nat. Arb. Forum Jan. 18, 2002) (same); see also Google Inc. v. Abercrombie FA 101579 (Nat. Arb. Forum Dec. 10, 2001) (“because of the famous and distinctive nature of Complainant’s GOOGLE mark, Respondent is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing [domain name]”).
By registering the Domain Name with actual knowledge of Complainant’s GOOGLE mark and name, Respondent acted in bad faith by breaching its registration contract with eNom because it falsely represented that its registration of the Domain Name did not infringe the rights of any third party. See Google Inc. v. wwwgoogle.com D2000-1240 (WIPO Nov. 9, 2000) (finding Respondent’s false representation to the registrar that its domain name did not infringe the rights of any third party constituted bad faith).
Respondent submits that while <google.biz> is identical to Complainant’s GOOGLE mark, the Complainant’s mark is not famous and Respondent itself asserts it has equal rights to two GOOGLE domain names. Respondent further argues that it has applied for trademark rights in GOOGLE for different services than those of Complainant’s marks. Respondent asserts that some of its marks are older than Complainant’s marks, that the registration of <google.biz> was in good faith for commercial use and that currently the domain is not in use.
Respondent asserts that the GOOGLE mark is not famous because it has not been in existence for a long time such as, for example, Coca-Cola, Pepsi-Cola or IBM. Respondent cites a number of other trademarks discovered through trademark searches in various jurisdictions. These include GOOGLES, GOOOGLEYS, BARNEY GOOGLE AND SNUFFY SMITH, GOOGLES, GOOGLE-GEAR, OOGLES AND GOOGLES OF STUFF, BARNEY GOOGLE, BARNEY GOOGLE’S EMPORIUM, GOOGLE-PLEX, GOOGLEBARRIES and others, as evidence that GOOGLE is not a new mark and that is it not distinctive because it is a common term in several marks.
Respondent challenges the veracity of the trademark registrations put in evidence by Complainant and questions whether these registrations are legitimate. Respondent further says it is not aware of trademark registrations in other countries and is not obliged to consider them because none of them are registered in Portugal or with any other member of the European Community.
Respondent applied for trademark rights for GOOGLE in Portugal in 1999 for International Class 35. Respondent also applied in 2000 for trademark rights in GOOGLE for Class 36 and 38. Complainant has filed opposition to these applications, and both parties have filed material with respect to that opposition. A decision is still pending.
Respondent has been the owner of the domain names <google.pt> and <google.com.pt> since September 14, 1999, and began using the term GOOGLE in 1998 in some of its documents. It has used GOOGLE in general in its business since early 1999. Respondent has registered the business name GOOGLE with the Ministry of Justice in Portugal.
The object of Respondent’s use of the domain name is: “services in business-oriented areas, international trade, sales for third and financial business, consulting in management.” Respondent asserts that Complainant is acting in bad faith in wanting to stop Respondent from using the domain name.
Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in respect of the domain name at issue. See, e.g. Policy 4(c). Document Techs., Inc., v. Int’l Elec. Communications, Inc., D2000-0270 (WIPO June 6, 2000) ( “‘Concrete evidence’ constitutes more than mere personal assertions…. Evidence in the form of documents or third party declaration should be furnished in support of such assertions”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent claims that its material filed amply supports a finding of rights and legitimate interests in the disputed domain name, and cites Adaptive Molecular Techs., Inc. v. Woodward, D2000-006 (WIPO Feb. 28, 2000) (“The decision (to deny the complaint) is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy”). Respondent also cites Thomas v. Customer Card Servs., Inc., D2000-0872 (WIPO Oct. 2, 2000) and nCUBE Corp. v. Dullad, FA 102759 (Nat. Arb. Forum Feb. 13, 2002).
Respondent further asserts that Complainant has sought to add additional services to its original trademark application after the initial application and after Respondent’s Portuguese application.
Respondent denies using Complainant’s name and logo in it’s services because Complainant has not proven the right to use the logo and that the logo is a generic mark. Respondent says it offers e-mail services which are not a service offered by Complainant and therefore there is no direct competition with Complainant’s business.
Respondent says Complainant’s use of GOOGLE in Portugal and other countries demonstrates bad faith on the part of Complainant.
Respondent denies that it intends to use the website to create confusion with Complainant’s business and it denies that it plans to sell, rent or transfer the domain name. Without proof of the intentional aspect, a Complainant must fail on this issue: see Thomas Cook Holdings Ltd. v. Vacation Travel, D2000-1716 (WIPO Jan. 22, 2001). Respondent registered the domain name as part of its ongoing interests and use of the word GOOGLE as part of its future business by use of a trade name which is registered in Portugal. The business name was registered in Portugal and Respondent has carried on business under that name. Respondent submitted evidence that as early as 1999 Respondent was engaged in business.
Respondent says Complainant’s assertions about Respondent with respect to YAHOO are false. Respondent is not the owner of any YAHOO domain anywhere in the world. Respondent, however, does admit to having made a trademark application in Portugal for YAHOO but argues that this had nothing to do with the yahoo domain name.
C. Additional Submissions
Complainant has established rights in the GOOGLE trademark. The mark is identical to the domain name in question, <google.biz>. Respondent has no rights or legitimate interests in the domain name. Respondent has registered the domain name in bad faith.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
There is no question that Complainant has rights in the GOOGLE mark and that the mark is identical to the disputed domain name. Complainant has demonstrated these rights through its extensive use of the GOOGLE mark and through the numerous trademark registrations submitted in evidence.
Pursuant to Section 4(c)(i) of the STOP Policy, Respondent does not own and is not the beneficiary of a trademark or service mark that is identical to the domain name. I agree with Complainant that the Portuguese trademark application does not establish any such rights. Furthermore, nothing in the evidence before me establishes that Respondent has ever made any independent use of the GOOGLE mark outside of its use to capitalize on Complainant’s trademark. The trademark in no way independently identifies Respondent’s services. While in other circumstances I might find that a Complaint cannot be sustained because of the existence of other proceedings, in this case I find that Respondent cannot justify its misappropriation of a famous registered trademark in a domain name simply because it filed a trademark application: Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (finding that the Respondent’s Tunisian trademark registration failed to establish his legitimate interest in the domain name and noting “To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark”).
Respondent is not and has not been commonly known by the domain name.
Pursuant to Policy 4(c)(iii), Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services. Respondent has already, through the use of <google.pt> and <google.com.pt>, been infringing on Complainant’s marks. Respondent has been using, and it is therefore appropriate for the Panel to infer that Respondent will continue to use, Complainant’s famous trademark to attempt to capitalize on the goodwill of Complainant’s mark for Respondent’s own commercial gain. Respondent has demonstrated no legitimate connection to the mark GOOGLE. The value of using the GOOGLE name is that Internet users will be attracted to Respondent’s site and will presume a connection or affiliation of Respondent’s site with Complainant. Respondent’s entire interest in the domain name derives solely from Complainant’s mark.
I do not accept Respondent’s assertion that GOOGLE is a generic word and that since there are other trademark registrations in existence incorporating the word GOOGLE within them, that this permits Respondent to use the mark as it sees fit. The fact Complainant owns numerous trademark registrations for the GOOGLE mark demonstrates that the mark is sufficiently distinct to be capable of protection.
Respondent in this case well knew of Complainant’s rights in the GOOGLE trademark. Respondent was aware of this when Respondent commenced using the <google.pt> and <google.com.pt> domain names. Respondent also knew that Complainant has challenged Respondent’s Portuguese trademark application. Respondent knew that registration of the <google.biz> domain name would have the consequence of preventing Complainant from demonstrating its trademark in a corresponding .BIZ domain name. This amounts to bad faith pursuant to Policy 4(b)(ii) of the STOP Policy.
Furthermore, Respondent is also acting in bad faith pursuant to Policy 4(b)(iv). As I have already indicated above, Respondent registered the domain name with the intention of attracting Internet users for commercial gain by creating the likelihood of confusion with Complainant’s well known GOOGLE mark. The use of the mark in this fashion would most certainly create confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s future web site and/or online activities with the business of Complainant. While Complainant does not offer e-mail services, the services it does offer could lead a reasonable user of the Internet to be confused as to whether the e-mail services offered by Respondent are in fact offered by Complainant as part of its web based services. Users will believe they are dealing with Complainant or someone affiliated with or endorsed by Complainant.
As I have said, there is no question Respondent knew of Complainant’s rights when it registered the domain name and that the reasonable inference from all the evidence is that Respondent registered the domain name because it knew of Complainant’s rights. As Complainant asserts, Respondent acted in bad faith by breaching its registration contract with eNom because is represented that its registration of the domain name did not infringe the rights of any third party.
For all of these reasons, I find that Respondent has acted in bad faith within the meaning of that term in the STOP Policy.
The Panel finds in favour of Complainant and orders transfer of the disputed domain name to Complainant. The Panel also determines that subsequent challenges under the STOP Policy against the domain name <GOOGLE.BIZ> shall not be permitted.
Wallace, Q.C., Panelist
Dated: June 19, 2002
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