Google Inc. v. Musa Erdogmus
Claim Number: FA1109001406784
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb, of Fenwick & West, LLP, California, USA. Respondent is Musa Erdogmus (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlekazanclari.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2011; the National Arbitration Forum received payment on September 9, 2011.
On September 12, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <googlekazanclari.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2011, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@googlekazanclari.com. Also on September 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 10, 2011.
A timely Additional Submission was submitted on behalf of Complainant on October 14, 2011.
On October 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Google Inc. was founded in 1997 and offers 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 owns numerous U.S. and foreign registrations for the GOOGLE mark. See Complaint, Exhibits 8, 8a, and 8b. The GOOGLE mark was found to be one of the top ten Best Global Brands in each of the last three years and Google has been ranked as the most visited group of websites in the world. See Complaint, Exhibit 6. Google typically brands its products with its house mark, GOOGLE, followed by a descriptive term or phrase. See Complaint, Exhibit 9.
The disputed domain name was registered by Respondent on January 31, 2009, and currently resolves to a commercial website that offers products that are connected to Complainant’s advertising program. See Complaint, Exhibit 10. The disputed site claims that the products offered provide consumers with a method to make money in a short period of time.
On June 6 and 7, Complainant and Respondent exchanged emails wherein Complainant explained its rights and requested transfer of the disputed domain name. Respondent replied that he has a disclaimer on his site, has rights to his product name, and refused to transfer the domain name. See Complaint, Exhibit 12.
Complainant contends that the disputed domain name is nearly identical, and certainly confusingly similar, to the GOOGLE mark. It notes that the domain name incorporates the mark in its entirety, merely adding the generic or highly descriptive term “kazanclari,” which means “gains” in Turkish. See Complaint, Exhibit 13.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant points out that the domain name currently resolves to a site that features products that are related to those offered by Complainant: “Specifically, the website offers a downloadable e-book and other related materials purporting to help consumers make money with Google’s AdWords advertising program.” Such commercial use, Complainant maintains, constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
On information and belief, Complainant further indicates that Respondent is not commonly known by the name or nickname of the domain name, or any name containing the GOOGLE mark. Nor has Complainant authorized or licensed Respondent to use any of Complainant’s marks.
Complainant also asserts that the disclaimer on Respondent’s website does not alleviate nor cure Respondent’s improper use of the domain name.
Complainant insists that “[t]he evidence overwhelmingly supports the conclusion that Registrant registered and is using the Domain Name in bad faith.” First, the fame and unique qualities of the GOOGLE mark make it extremely unlikely that Respondent created the domain name independently.
Second, Respondent’s current use of the domain name to resolve to a website that offers products for sale that are connected to Google constitutes bad faith registration and use. “Moreover, Registrant’s offering appears to be a work-from-home scam misleading unsuspecting users into thinking they can make money from Google. Registrant perpetuates that notion with images of money and checks on the website.”
Third, Complainant notes that Respondent’s site uses a modified GOOGLE logo that pops up when visiting the home page encouraging visitors to provide contact information. See Complaint, Exhibit 10. ‘Such blatant use of the GOOGLE logo increases the likelihood of confusion and is further evidence that Registrant is trying to improperly benefit from a perceived association with Complainant.”
B. Respondent
Respondent asserts that the <googlekazanclari.com> domain name is the official site of the book Google Kazanclairi. Such book is about affiliate marketing, a system in which the partners are able to sell products and services. According to Respondent, “[t]he fastest and easiest way to sell a product is advertisement. Google adwords is an effective method of advertisement. However, it is not known commonly. The boook (sic) `Google Kazanclari’ aims to teach adwords system in detail.”
Respondent indicates that such book does not compete with Complainant and, thus, there is no unfair competition. He further argues that the book and the disputed site do not tarnish Complainant. “On the contrary, it supports google adwords system to be … used correctly and develop.” Respondent also points out that his site emphasizes that he does not have any relationship with Complainant. “What we do is to tell the people the power of internet advertisement.”
Respondent further notes that he has applied with the Turkey government for a registration for the mark “google kazanclari.”
Respondent asserts that when you search the word “google,” a number of websites using domains that include the term “google” appear.
C. Additional Submissions
In its Additional Submission, Complainant indicates that Respondent’s comments about unfair competition are irrelevant to the instant proceeding. Complainant further notes that Respondent sought to secure trademark rights in Turkey to the term “Musa Erdogmus Google Kasanclari” only after this proceeding was brought and, in any case, that Complainant’s broad rights in the GOOGLE mark in Turkey (see Additional Submission, Exhibit B) will block any registration from issuing in favor of Respondent.
Finally, Complainant contends that the existence of third parties owning additional domain names that contain the GOOGLE mark is not relevant. “Google is not obligated to pursue or hold all domains containing its trademarks, although it continues to aggressively police and protect its marks.”
The Panel finds that: (1) the domain name in issue is confusingly similar to a mark in which Complainant has rights; (2) the Respondent does not have rights or legitimate interests in such domain name; and (3) the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 finds that the disputed domain name <googlekazanclari.com> is confusingly similar to the GOOGLE trademark. The domain name incorporates the mark in its entirety, adding only the generic or descriptive term “kazanclari”[1] and the top-level domain “.com.”
The evidence further indicates that Complainant, through its registrations covering and use of the GOOGLE mark, has rights in such mark. The Panel notes that Complainant has registrations in Turkey, where Respondent resides, for GOOGLE and GOOGLE-related marks. See Additional Submission, Exhibit B.
The Panel concludes that Complainant has sustained its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain name. The evidence indicates that Respondent uses a domain name confusingly similar to Complainant’s mark in connection with a site that offers a downloadable e-book and other materials purporting to help consumers make money with Complainant’s AdWords program. As such, the disputed domain name is not being used in connection with a bona fide offering of goods or services and does not constitute either a noncommercial or fair use. There also is no evidence that Respondent is commonly known by the domain name. The WHOIS information for the disputed domain name identifies the registrant as “Musa Erdogmus.”
The Panel concludes that the disputed domain name was registered and is being used in bad faith. As determined above, the disputed domain name is confusingly similar to the GOOGLE mark, one of the leading brands in the world, and is used in connection with a site that “aims to teach [Complainant’s] adwords system in detail” through an e-book titled Google Kazanclari. As a result, the Panel finds that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, internet users to his site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site and of the goods and/or services on such site. The prominent use of the distinctive GOOGLE logo on the disputed site itself further exacerbates the likelihood of confusion. Under these circumstances, the Panel concludes that the disclaimer on Respondent’s site does not avoid the likelihood of confusion.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlekazanclari.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: October 27, 2011
[1] The evidence (see Complaint, Exhibit 13) establishes that the term “kazanclari” is a Turkish word which means “gains.”
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