Google Inc. v. 207 Media
Claim Number: FA0911001293500
PARTIES
Complainant is Google Inc. (“Complainant”), represented by Meredith
M. Pavia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <groovle.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Karl V. Fink (Ret.), Hon. Robert T. Pfeuffer (Ret.) and Mr. David E.
Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 6, 2009; the
National Arbitration Forum received a hard copy of the Complaint on November 9, 2009.
On November 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <groovle.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 November 12, 2009, a
Notification of Complaint and Commencement of
A timely Response was received and determined to be complete on December 1, 2009.
A timely additional submission was received from Complainant on
December 7, 2009.
On December 10, 2009, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Karl V. Fink (Ret.), Hon. Robert Pfeuffer
(Ret.) and Mr. David Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Google is a
The GOOGLE name 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.
The GOOGLE search engine maintains one of the largest collections of
searchable documents in the world.
Google’s website is one of the most popular destinations on the
Internet.
Google also offers a wide range of other products besides search.
The GOOGLE Mark has been widely promoted among members of the general
consuming public since 1997, and has exclusively identified Google. Due to widespread and substantial
international use, this mark and name have become famous.
Google has used the GOOGLE Mark continuously since well prior to May
13, 2003, the registration date for the Domain Name. Google owns
Google owns numerous
The Domain Name currently resolves to a website that offers services
that are connected to Complainant’s custom search engine.
Google has exchanged communications with Registrant in an effort to
have the Domain Name transferred from Registrant to Google Registrant responded, indicating he had
removed the GOOGLE trademark and logo from the site and added a disclaimer.
The Domain Name is “nearly identical or confusingly similar” to
Complainant’s GOOGLE Mark. Minor
alterations or misspellings do not eliminate the confusingly similar aspects of
the Domain Name and Complainant’s mark.
Here, the Domain Name is only two letters different from Complainant’s
GOOGLE mark; therefore, the Domain Name is confusingly similar to Complainant’s
mark.
Registrant is using the Domain Name in connection with Complainant’s
search engine services and is using a website layout that mimics Google’s
search homepage.
Registrant is clearly using Complainant’s famous GOOGLE Mark to attract
internet users to its own website for commercial gain.
The Domain Name displayed clear references to Complainant through the
use of Complainant’s GOOGLE mark and logo.
The layout of the search box and other items on Registrant’s customized
homepages is highly similar to the layout of the Google search homepage.
As a user of Complainant’s custom search engine, Registrant agreed to
adhere to the Google Custom Search Branding Policy, which states that users
“may not display Google Brand Features in any m
Registrant has no rights or legitimate interests in the Domain Name.
The fame and unique qualities of the GOOGLE Mark make it extremely
unlikely that the Registrant created the Domain Name independently. Registrant was not only aware of
Complainant’s rights in the GOOGLE mark, but clearly selected the Domain Name
because of the confusingly similarity to the GOOGLE mark. This is evidenced by Registrant’s prior use
of the GOOGLE mark and logo, and slogans stating “Your Groovy Google Custom
Search Homepage” and “Groovle – Your GROOVY Google Homepage,” as well as
Registrant’s use of a layout that is highly similar to Google’s search
homepage.
Respondent’s current use of the Domain Name to resolve to a website
that offers services that are connected to Google constitutes bad faith use and
registration.
Registrant is violating Google’s Custom Search Branding Policy by use
of the Domain Name. Such behavior is
further evidence of bad faith use and registration.
B. Respondent
The Complaint must be dismissed because it is not a dispute within the
jurisdiction of the UDRP. The
Complainant has not met the three-part test pursuant to Paragraph 4(a) of the
UDRP.
The Complainant has a well known trademark for GOOGLE in connection
with its search engine services and related products and services.
Respondent is a federally incorporated Canadian Corporation, with a
registered office in
To-date, the Complainant has brought forty-nine (49) UDRP Complaints to
the NAF and sixteen (16) Complaints to WIPO over its GOOGLE mark, for a total
of sixty-five (65) separate complaints concerning hundreds of domain names, and
it has been successful in every single one (the “Google Cases”) – except for
one case – froogles.com, that case is similar to the instant case.
The Domain Name, Groovle.com was registered by the Respondent on or
about June 6, 2007. The Domain Name
however, was first created on or about May 13, 2003. The Respondent commenced immediate use of the
Domain Name after registering it on or about June 7, 2007. Since the launch of Groovle.com, the Respondent
has continually used the Domain Name in association with the Groovle.com web
site.
The Complainant has implemented “Guidelines for Implementing Google
Custom Search”. According to the
Guidelines, while developers must use Google’s trademarks and brand to identify
their association and affiliation with the Google search service, developers should
not, imply any “other” sponsorship or endorsement by Google.
The Complainant and the Respondent jointly provide advertising through
Groovle.com. Respondent agreed to only
use advertisements provided by the Complainant on Groovle.com.
Google contracts with developers such as the Respondent to distribute
Google Pay Per Click (“PPC”) advertisements via customized start page
services. Users who use the Respondent’s
service will see advertisements provided by Google, and Google will pay a small
percentage of these PPC advertising revenues to developers, such as the
Respondent. Since the Respondent has
contracted with the Complainant, the Respondent has consistently been paid by
Google for its efforts in distributing Google PPC advertisements via the Groovle.com
service.
Respondent has also made various changes to the appearance of the Web
Site, in order to further differentiate itself from the Complainant. There is little or no likelihood of any
confusion between Groovle.com and the Complainant. The Complainant has not provided any evidence
whatsoever of any actual confusion.
There is no misspelling of GOOGLE involved. The Disputed Domain Name contains an
important “R” and important “V” that serve to distinguish the sound,
appearance, meaning, and connotation of GROOVLE from GOOGLE. The addition of the “R” and the “V” clearly
make the predominant word and meaning “GROOVE” or “GROOVY” rather than GOOGLE.
Respondent has a legitimate interest in the Domain Name. Respondent has carried on business under the
Groovle.com web site and domain name for over 2 ½ years, unmolested and
undisturbed by the Complainant, who was a joint venture of sorts with the Respondent.
Before notice of the dispute, Respondent used the Domain Name in
connection with an offering of goods and services that was so bona fide that
the Complainant itself pays for it.
The question of trademark infringement is outside the scope of the
UDRP. The UDRP is concerned with
cybersquatting only, and this is not a cybersquatting case. Likewise, the question of whether or not the
Respondent breached the Contract and Guidelines, is an argument outside of the
scope of the UDRP.
None of the four enumerated grounds in Paragraph 4(b) of the UDRP for a
finding of bad faith exist in this case.
C. Additional Submissions
Complainant’s Additional Submission:
Complainant considers the “froogles.com case” (Googe Inc. v. Richard
Wolfe, FA0275419 (Nat. Arb. Forum July 18, 2004)) to have been wrongly
decided.
Assuming the <froogles.com> case was correctly decided, the
situation presented here is distinguishable.
In this case, the Domain Name begins with the letter “G” as does
Complainant’s mark. The identical, most
notable letter creates a stronger similarity to Complainant’s GOOGLE mark than
“froogles.”
As admitted by Registrant, the Domain Name was derived from the GOOGLE
mark.
Bad faith registration and use is manifest here: Registrant selected and registered the Domain
Name because of its similarity to GOOGLE and is using it for services that compete
with Google.
The totality of the circumstances, including the content of
Registrant’s website, may be considered in assessing whether the GOOGLE mark
and the Domain Name are confusingly similar.
Proof of actual confusion is not required to show a domain name is
confusingly similar to a Complainant’s mark.
The fame and uniqueness of the GOOGLE mark can and should be taken into
account both in assessing whether the Domain Name is confusingly similar to
Complainant’s mark and in evaluating Registrant’s motivation in registering and
using the Domain Name.
The Response does not accurately explain the nature of Registrant’s
“contract” with Complainant.
Registrant’s participation in Google’s Custom Search Engine (“CSE”) and
Google’s AdSense programs is not the result of a negotiated deal. Registrant signed up for CSE via online
clickwrap. Google did not review
Registrant’s site before it launched nor did Google ever agree that
Registrant’s site did not violate Google’s terms of use.
Encouraging developers to select Google’s custom search services is not
the same as encouraging (or permitting) developers to register domain names
that are confusingly similar to Complainant’s trademarks.
The length of time Registrant has held the Domain Name is not relevant.
The GOOGLE brand is incredibly popular and Google works hard to
identify and remedy abuses. Nonetheless,
it is impossible for Google to immediately identify all abuses, even those
committed by people using Google’s services.
FINDINGS
For the reasons set forth below, the Panel
finds the relief requested should be denied.
DISCUSSION
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.
Respondent contends that its
<groovle.com> domain name is sufficiently differentiated from
Complainant’s GOOGLE mark. Respondent
argues that the disputed domain name is not a misspelling of Complainant’s
mark; Respondent asserts that the disputed domain name contains the significant
letters “r” and “v” which serve to distinguish the sound, appearance, meaning,
and connotation of “groovle” from Complainant’s GOOGLE mark. Furthermore, Respondent contends that its
alterations clearly transform the predominant word of the <groovle.com>
domain name to “groove” or “groovy,” not GOOGLE. Respondent contends that these alterations
are sufficient to distinguish its <groovle.com> domain name from
Complainant’s GOOGLE mark. The Panel agrees
and finds that Respondent’s <groovle.com> domain name is not
confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Google, Inc. v. Wolfe,
FA 275419 (Nat.
Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not
confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the
domain name are sufficiently different to make it distinguishable from
Complainant's mark because the domain name creates an entirely new word and
conveys an entirely singular meaning from the mark.”).
Complainant has not proven this element.
Since the Panel found that Complainant has
not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not
confusingly similar to the mark, the Panel declines to analyze the other two
elements of the Policy. See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <groovle.com> domain name REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Chair
Hon. Robert T. Pfeuffer (Ret.), Panelist
Mr. David E. Sorkin, Panelist
Dated: December 24, 2009
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