Google Inc. v. James Hung
Claim Number: FA0902001249421
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia, of Fenwick & West LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleventures.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2009.
On February 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googleventures.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Respondent submitted a request for additional time to respond to the Complaint due to extenuating circumstances; the Forum granted Respondent’s request setting a deadline of April 7, 2009 for Respondent to submit a timely Response.
A timely Response was received and determined to be complete on April 7, 2009.
An Additional Submission was received from Complainant on April 13, 2009. An Additional Submission was received from Respondent on April 20, 2009. Both Additional Submissions were found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On April 15, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s domain name <googleventures.com> is confusingly similar to its trademark GOOGLE; that Respondent does not have any rights or legitimate interests with respect to the domain name; and that the domain name was registered and used by Respondent in bad faith.
Respondent contends that the <googleventures.com> domain name is comprised of common, descriptive terms. Respondent also contends that he operates a “venture consulting firm” called The Hive. The CEO of The Hive “registered the unique domain name – Go Ogle Ventures.com – on June 10, 2004…as a new business concept and line of professional services of The Hive…”
The Respondent argues that there is no likelihood of confusion because the “ventures industry” is different and distinctive from the “computer services, software and hardware industry.” Moreover, the Respondent argues that the term “GOOGLE” has become generic. The Respondent asserts that it has legitimate rights in the domain name, and that its registration and use of <googleventures.com> is in good faith.
C. Additional Submissions
In its Additional Submission, Complainant argues that the name to be considered is <googleventures.com>, regardless of the Respondent’s particular spacing and capitalization. Complainant states that GOOGLE is a strong and protectable trademark, and the existence of other domain names containing “google” is not relevant in this proceeding. Complainant is associated with a wide variety of businesses, including a venture capital arm called Google Ventures. Complainant also points out that the laches defense is not available under the UDRP rules.
In its Additional Submission, Respondent states that “The Complainant publicly launched its new ventures business ‘Google Ventures’ with the URL [<google.com/ventures>] to great media fanfare on March 31, 2009, in the very midst of this Commencement phase of this NAF Domain Name Dispute Process for the domain name.” Respondent argues that Complainant had been planning this new business for several years, while at the same time not objecting to Respondent’s domain name registration for five years.
Respondent argues that Complainant has effectively engaged in reverse domain name hijacking, and that many third parties use the “Google” name.
Complainant has provided services in association with the GOOGLE trademark since 1997 at Complainant’s <google.com> website.
the owner of the trademark GOOGLE, and owns three
In addition to Complainant’s
Since its inception in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search engines in the world. According to Nielson NetRatings, Google is the most popular search provider. For example, in September 2008, about 60% of searches were performed using Google.
Google offers the most comprehensive image search on the web with billions of images (GOOGLE Image Search), news (GOOGLE News), and various other search engine products, including GOOGLE Video, GOOGLE Catalogs, GOOGLE Groups, GOOGLE Product Search and GOOGLE Book Search. Google also offers GOOGLE Earth, a mapping and geographic site that provides satellite imagery, maps, etc.
On June 10, 2004, Respondent registered the domain name <googleventures.com>. The domain name resolves to a site created by GoDaddy.com, with a series of links to sponsored listings, including “Website Traffic on Google, “Online Marketing,” “Internet Marketing Degree,” etc. By clicking on these links, a computer user would presumably obtain further information concerning these topics. Respondent’s default GoDaddy.com setting generates income only if the Respondent had established a CashParking account, which Respondent has not established.
Complainant contacted Respondent several times to request that Respondent stop using the <googleventures.com> name and transfer the domain name to Complainant, including e-mails dated January 26, 2009; February 2, 2009; and February 9, 2009. Respondent did not reply to this correspondence.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes that Complaniant has established rights in the GOOGLE mark because it holds trademark registrations throughout the world including the United States Patent and Trademark Office (“USPTO”). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent asserts that its <googleventures.com> domain name is not confusingly similar to Complainant’s GOOGLE mark for several reasons: the domain name is “Go Ogle Ventures.com,” the term “ventures” is descriptive of Respondent’s global venture consulting firm, and Complainant’s services are unrelated to the ventures industry. The Panel is not persuaded by these arguments. A domain name registrant may not avoid a likelihood of confusion by simply adding a descriptive term to a well-known trademark. See, e.g., Google Inv. v. Babaian, FA 1060992 (Nat. Arb. Forum Oct. 1, 2007) (finding that where the Registrant merely added “generic words [like] ‘web,’ ‘date,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar (re googledatedrive.com, googlenetstorage.com, googlewebsrive.com, googlewebstorage.com, mygoogledrive.com and mygooglestorage.com domain names).
Respondent’s <googleventures.com> domain name is confusingly similar to the GOOGLE mark because it contains Complainant’s entire mark, plus the generic term “ventures” and the generic top-level domain (“gTLD”) “.com.” In view of the fact that Complainant uses a family of GOOGLE marks that contain a similar type of generic name after the word GOOGLE, this Panel concludes that the <googleventures.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant asserts that the <googleventures.com> domain name resolves to a website that contains several hyperlinks to various unrelated third-party websites. In addition, Complainant contends that Respondent’s resolving website contains a search engine that is in direct competition with Complainant. Complainant further contends that Respondent collects click-through fees for the aforementioned hyperlinks.
This Panel is not convinced that Respondent has rights or legitimate interests in the domain name. The Respondent has not established a bona fide offering of goods or services under the domain name, in that the domain name has always been associated with a default page of GoDaddy.com. Moreover, Respondent has not shown any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Moreover, because Respondent is listed as “James Hung” in the WHOIS information, this Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent is displaying hyperlinks to third-party websites for a fee, which creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and its corresponding website.
This Panel concludes that a
likelihood of confusion exists, although it appears that Respondent is not
collecting a fee from the GoDaddy.com default home page. In
view of the confusion caused by the domain name, and the resulting diversion of
Internet traffic, this Panel believes that Respondent’s actions constitute bad
faith registration and use under Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also
Respondent contends that Complainant has not diligently enforced its rights in its GOOGLE mark because of the five year span between Respondent’s registration of its <googleventures.com> domain name and the current proceeding. In a situation where a trademark owner fails to pursue an infringement matter diligently, it may in some cases be concluded that the trademark owner has abandoned its claim and the accused infringer may be able to build up trademark rights.
However, this Panel concludes that the Doctrine of Laches does not apply under the Policy and that Complainant has been diligent in its trademark enforcement. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defense of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: April 29, 2009
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