Google Inc. v Dot Name Communications

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. This dispute concerns the domain name <googlemail.com> (the “Domain Name”).

2. The registrar of the Domain name is eNom, Inc. (“eNom”).

3. Complainant is a California corporation with its principal place of business at 2400 Bayshore Parkway, Mountain View, California, 94043.

4. This dispute is subject to a mandatory administrative proceeding as provided for in Section 4(a) of the UDRP because:

a. The domain name <googlemail.com>, which fully incorporates Complainant’s famous trademark and trade name GOOGLE, is confusingly similar to Complainant’s GOOGLE trademark and trade name.

b. Respondent does not have any rights or a legitimate interest in the Domain Name by virtue of the fact that it contains and trades on the goodwill of Complainant’s GOOGLE mark and name, and Respondent’s use of that mark and name is unauthorized. Respondent is not and has never been a licensee of Complainant. Respondent is not and has never been otherwise authorized by Complainant to use the GOOGLE mark.

c. Respondent’s registration and use of the Domain Name meet the bad faith requirement described in Paragraph 4(a) of the UDRP.

5. 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>.

6. Currently, the GOOGLE search engine has an index of over 2 billion web pages, and responds to more than 100 million search queries per day. The GOOGLE search engine offers Internet users an easy-to-use interface, advanced search technology, and a comprehensive array of search tools. In addition, the GOOGLE search engine allows 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; and retrieve more than 18 millions .PDF documents.

7. Google’s website is one of the most popular destinations on the Inernet. For example, Nielsen NetRankings ranked Google as number 4 of the Top 25 Web Properties for the week of June 16, 2002.

8. Google has consistently been honored for its technology and its services, and has received numerous industry awards, including the following recent awards:

a. 6^th Annual Webby Awards - Best Practices, Best Practices - People’s Voice, and Technical Achievement - People’s Voice (June 2002)

b. PC World’s World Class Awards 2002 - Internet Product of the Year and Best Search Engine (June 2002)

c. M.I.T. Sloan eBusiness Award - M.I.T. Students’ Choice (April 2002)

9. 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.

10. 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 a 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 1.6 billion Internet web pages through their telephones and/or other wireless devices.

11. Google 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.

12. Google is the owner of numerous Untied 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.

13. 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.

14. 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 <googlemail.com> on July 18, 2001.

B. Respondent

Response letter of Dot Name Communications, the Respondents abovenamed

1. At the outset, the Respondent records its objection to the very reference being made to the National Arbitration Forum by the Complainant, alleging a dispute on a non-issue and the National Arbitration Forum instantaneously acting upon the same without application of its mind.

2. The Complainant as well as the act of the Forum presupposes in absolute terms that the dispute pertains to a ‘domain name’ simpliciter and the Forum is competent to try the same on its assumed capacity as a arbiter thereto. This ‘bias’ against the Respondent is well pronounced by the denial of grant of sufficient time to the Respondent to reply to the false complaint, by the Forum. The forum has thus already disqualified itself as being an arbitrator for any reason whatsoever, as the fundamentals of equity is breached by its action.

3. Hence, this reply is to be taken as a reply given ‘under strong protest’ without admitting to the jurisdiction of the National Arbitration Forum in any way not even impliedly and/or agreeing to any decision thereof.

4. The reply is under protest and given only to prove the bonafides of the business carried on by the Respondent and to disprove the false Complaint foisted against it by the Complainant, being a person in United States of America.

5. Foremost,

a. The Complaint of the Complainant is totally a mala-fide action and is patently illegal in any part of the world;

b. The request of the Complainant to entertain and try its false Complaint by the National Arbitration Forum, under the Uniform Domain Name Dispute Resolution Policy and the rules thereunder is totally misplaced and untenable in law; the Forum having no domain to decide on the alleged ‘domain’ factor;

c. Admittedly, the Complaint does not disclose any ‘cause of action’ and hence the forum has simply endorsed verbatim the Complaint to the Respondent, without seeking a reply to any particular ‘issue’ from the Respondent in the lop-sided reference to it by the Complainant; in the absence of any reference to any ‘issue in dispute’ the Complaint is deliberately vague and does not deserve a reply;

6. The idea with which the Respondent initially began their website was after taking a survey of Indians generally and finding that any normal surfer of any web site would, out of sheer curiosity, test the water of the web site by surfing on to it by viewing the contents provided by the web-site presenter. In the instant case, the Respondent, naturally climaxed on the word ‘googlemail’, since he was an email provider. It is internationally well known that India is a cricket playing nation. The blood line of almost every Indian has cricket imbedded in it. The site must be eye catching and highly appealing. With this in mind, the Respondent, pitched on google, the meaning of which is found in the shorter Oxford English on Historical Principles, Vol. 1, which defines google. As a verb - of a ball or the bowler. The same is described of an unknown origin of the by-gone era of 1904, and is a cricketing terminology of an off-break ball bowled with leg-break action. An information broken by the Respondent before the eyes of a surfer which prompts the surfer to walk out with the supplied information for his benefit. Further, Webster’s encyclopedic unabridged dictionary of the English language; meaning ‘Cricket - a bowled ball that swerves in one direction and breaks in the other’; the bowled ball equated to the services of information provided for by the Respondents from one end of the provider which opens up at the other end by the end user of the web-site.

7. Respondent submits that there are over 300 websites with names of GOOGLE which the Respondent is aware of. The Respondent is not intruding in the Complainant’s line of business. Thus, the Complaint must fail.

FINDINGS AND DISCUSSION

Complainant’s Rights in the Mark

Respondent misappropriated Complainant’s goodwill when it registered the domain name <googlemail.com>, which is confusingly similar to Complainant’s GOOGLE mark. The addition of the word “mail” does not distinguish the Domain Name from Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO) (finding the addition of a generic term to the GOOGLE mark in a domain name does not provide a basis for distinguishing it from Complainant’s mark); see also Google Inc. v. Freiji, FA 102609 (Nat. Arb. Forum) (same).

In October 2001, the same period during which Respondent posted its offer to sell the Domain Name in eNom’s WHOIS database, Respondent was using the Domain Name to provide search engine services via Go To, one of Complainant’s competitors, and to advertise the domain name registration services of eNom.

On October 15, 2001, Complainant sent Respondent a cease-and-desist letter demanding that Respondent discontinue using the Domain Name and transfer it to Complainant.

On October 16, 2001, Respondent replied, acknowledging that “Google is a very famous name” and admitting that it sells domain names. Respondent also stated it “helped numerous Indian [companies] to get back their identity [through] our Watch My Domain service,” and offered to “help to monitor domains which are of interest to [Complainant].”

In its October 16, 2001 email, Respondent claimed, falsely and without factual basis, that Complainant was discriminating against Respondent by “singling out” Respondent from other third parties who have registered domain names incorporating the GOOGLE mark. The existence of other infringers, however, does not excuse Respondent’s bad faith use and registration of the Domain Name. Complainant vigorously defends its rights in the GOOGLE mark, but is under no obligation to act against every infringing use. See, e.g., Century 21 Real Estate Corp. v. Sandlin, 846 F2d 1175, 1181 (9th Cir. 1988) (evidence of other potential infringers “irrelevant” to suit against particular infringer); see also Heaton Distrib. Co. v. Union Tank Car Co., 387 F.2d 477 (8th Cir. 1967) (small infringing uses by others deemed “unimportant” to scope of trademark owner’s rights).

Respondent’s registration and use of the Domain Name is designed to cause confusion and to deceive consumers into mistakenly believing that Respondent and its services are offered, authorized, or sponsored by Complainant; or are otherwise connected, associated, or affiliated with Complainant. Respondent undoubtedly intended to profit, and may have already profited, by its unauthorized use of the GOOGLE mark to direct Internet users to its commercial <DOTNAME.COM> website.

Respondent’s Rights or Legitimate Interests

Neither Respondent’s former use of the Domain Name to offer competing search engine services nor its current use of the Domain Name to trade on Complainant’s goodwill in its GOOGLE mark for commercial gain constitutes a bona fide offering of goods and services under Section 4(c)(i) of the UDRP. See Ciccone v. Parisi, D2000-0847 (WIPO) (holding that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”).

Registration or Use in Bad Faith

Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(i) of the UDRP, because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of Respondent’s out-of-pocket expenses. As discussed above, Respondent previously listed a sale offer in eNom’s WHOIS database, and offered to transfer the Domain Name to Complainant for $500, an amount which exceeds Respondent’s out-of-pocket registration fee as paid to eNom. See World Wrestling Fed’n Entm’t, Inc. v. Bosman D1999-0001 (WIPO) (finding bad faith where Respondent offered to sell Domain Name for an amount exceeding Respondent’s out-of-pocket expenses).

DECISION

Panel finds in favor of Complainant Google Inc. and against Respondent Dot Name Communications and ORDERS, as a remedy, that the Domain Name <googlemail.com> be transferred to Google Inc.

JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

Dated: August 18, 2002

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