Google Inc. v. Comunicus Lda
Claim Number: FA0204000110785
PARTIES
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.
A. 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).
B. Respondent
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
None
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.
DECISION
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.
Anne M.
Wallace, Q.C., Panelist
Dated: June 19, 2002
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