Google Inc. v. Africahostway Company Limited
Claim Number: FA1112001420456
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is Africahostway Company Limited (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleghana.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or 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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <googleghana.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@googleghana.com. Also on December 20, 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 January 9, 2012.
Complainant’s Additional Submission was received on January 13, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on January 16, 2012 and deemed compliant with Supplemental Rule 7.
On January 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant-Google in its Complaint has stated that it is a Delaware Corporation located in Mountain View, California. The name GOOGLE was created by Stanford Ph.D. candidates Larry Page and Sergey Brin, in 1997 and since then Google has become one of the largest, highly recognized, and widely used Internet search services in the world. Google’s primary website is located at <google.com>. Currently, the GOOGLE search engine maintains one of the largest collections of searchable documents in the world. The GOOGLE search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content in many different languages. Google was found to be one of the top ten Best Global Brands in each of the last three years. Besides, Google’s website is one of the most popular destinations on the Internet. For example, comScore and Bloomberg.com have ranked Google as the most visited group of websites in the world. In support of its claim about ranking of its website, Complainant has attached copies of the Best Global Brands rankings, comScore rankings and the Bloomberg.com article as Ex.6.
· It is the claim of the Complainant that Google has consistently been honored for its technology and its services, and has received numerous industry awards, from 1998 onwards. Complainant states that Google also offers co-branded web search solutions and has hundreds of thousands of publishers in its content network. In addition to being accessible from desktop PCs, Google’s adaptable, highly scalable search technology can also be accessed from most mobile and wireless platforms.
· Complainant further states that it offers a wide range of other products and services besides search on its website. In this regard Complainant has relied upon the list of products and services which are available on the GOOGLE website - <google.com/intl/en/options/.426082/00100/DOCS/2088723.7>.
· The Complainant that its GOOGLE Mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services. The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and is exclusively identified.
· The Complainant claims that the GOOGLE Mark and name symbolizes the tremendous goodwill associated with the mark/name and are property rights of incalculable value. Due to widespread and substantial international use, the mark and name GOOGLE have become famous.
· The Complainant claims that it owns numerous United States and foreign registrations for the GOOGLE Mark. Each of the Registration remains valid and in full force, lists of which have been annexed by the Complainant as Ex.8, 8a, 8b & 8c.
· The Complainant contends that it typically brands its country-specific websites with its house mark, GOOGLE, followed by the relevant country name, such as Google India (see <google.co.in>) and Google Saudi Arabia (see <google.com.sa>). In this regard, it has attached as Ex. 12 the print-out of its website Google Ghana. The Complainant claims that Google Ghana website, <google.com.gh>, was launched on April 7, 2008.
· The Complainant states that the Registrant of the disputed domain name <googleghana.com> is a company located in Accra, Ghana (see Ex. 4). The disputed domain name was registered on March 5, 2009.
· The Complainant contends that the disputed domain name resolves to a website that imitates Complainant’s website, utilizes Complainant’s Custom Search Engine, and makes unauthorized use of Complainant’s GOOGLE logo.
· The Complainant contends that in order to amicably resolve the matter, on August 29, 2011, Complainant sent a letter to Registrant explaining its rights in the mark / domain name and requesting for deactivation of the disputed domain name, cancellation or transfer of the disputed domain name, agreement not to adopt another domain name containing Complainant’s GOOGLE mark, and also agreement to not to use the GOOGLE logo without its permission.
· The Complainant claims that the Registrant of the disputed domain name, on September 1, 2011, while admitting that the Registrant is aware of the Complainant and Complainant’s rights, and that it will consider Complainant’s request but controverted that it was in existence before the inception of Complainant’s local company <google.com.gh>, and that it will include a disclaimer on its (Respondent) website, but refused to transfer the disputed domain name to the Complainant.
· The Complainant contends that it has been using the GOOGLE Mark continuously since well prior to March 5, 2009, i.e. the registration date for the disputed domain name. The Complainant claims that it owns U.S. registrations issued prior to or resulting from applications filed prior to, March 5, 2009. Each of those registrations remain valid and in full force. The Complainant contends that it also owns Trademark registrations in Ghana {see Ex. 8(a)} and hence it has rights in the GOOGLE Mark that predate the registration date of the Domain Name. In this regard, Complainant has relied upon the decision of this Forum in Google Inc. v. Smithers, FA 826563 (Nat. Arb. Forum Dec. 7, 2006), holding that “[a]lthough respondent’s registration of the [disputed domain names] predate [sic] Complainant’s USPTO registration, Complainant’s filing date of September 16, 1998 predates respondent’s registration [which] sufficiently establishes rights in the GOOGLE Mark” (re <googlevideo.com>, <googlevideos.com>, <googlemovie.com>, <googlemovies.com>, <googleforums.com> and <googlewebmaster.com> domain names).
· The Complainant further contends that a domain name is said to be “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporates said mark.” The Complainant claims that in the present case the disputed domain name incorporates the famous GOOGLE Mark in its entirety, and is confusingly similar to it. In this regard, it has relied upon the decision of WIPO in PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003), holding <pepsiadventure.net>, <pepsitennis.com>, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”.
· The Complainant contends that the disputed domain name merely adds the country name “Ghana” to its GOOGLE mark. Complainant further contends that adding a geographic term to the GOOGLE mark is not sufficient to escape a finding of confusing similarity, as it is well established that the addition of geographic terms to a trademark does nothing to distinguish an otherwise identical or confusingly similar domain. It has relied upon the decision of WIPO in Google Inc. v. 4 Fenix Group, Ltd., WIPO Case No.D2011-0790, holding that <googlemontenegro.com>, and other domains containing the GOOGLE mark and a country name, to be confusingly similar to the GOOGLE mark because the addition of a geographical term fails to distinguish a domain name from a trademark wholly contained in such name.
· The Complainant has also contended that given Google’s international website branding policy whereby Google typically uses its house mark, GOOGLE, with the country name for which the specific iteration of the Google service is intended, users seeing the <googleghana.com> domain is even more likely to believe that the disputed domain name originates with Google. The likelihood of confusion is exacerbated by the fact that Google offers a country specific website for Ghana at <google.com.gh> that was launched in April 2008. As a result, users seeing the disputed domain name are even more likely to believe the domain names are affiliated with or are sponsored by Google.
· The Complainant contends that Registrant is using the Domain Name in connection with Complainant’s search engine services, a logo that is virtually identical to Complainant’s GOOGLE logo, and a website layout that mimics Google’s search homepage. All of these aspects exacerbate the confusing similarities between the Domain Name and Complainant’s mark.
· Having regard to the above reasons, the Complainant alleges that the disputed domain name is nearly identical, and certainly confusingly similar, to the Complainant’s GOOGLE mark.
· With regard to its contentions regarding Respondent having no rights or legitimate interests in the disputed domain name, the Complainant contends that previous Panels in its decisions have noted that any “respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” In this regard, Complainant has relied upon the decision of this Forum in the case of Google Inc. v. Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002), holding that Registrant has not been authorized by Complainant to register or use the Domain Name (re <googlesex.com> domain name).
· The Complainant contends that the disputed domain name currently resolves to a website that substantially imitates its website and uses services that are related to those offered by Complainant. The website uses Complainant’s Custom Search engine technology and has the same look and feel of Complainant’s website. Not only is Registrant using a logo virtually identical to Complainant’s famous GOOGLE logo, it is also using it in conjunction with a search box, text font, and tabs that are very similar to those of Complainant’s famous search engine located at <google.com>. Registrant is clearly using Complainant’s famous GOOGLE mark and logo to attract Internet users to its own website for commercial gain. Such use is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name. In this regard, Complainant has relied upon the following decisions of this Forum :
(i) Google Inc. v. SP, FA 1395068 (Nat. Arb. Forum July 27, 2011) – holding that Respondent’s efforts to pass itself off as Complainant by imitating Complainant’s general look and feel indicates that Respondent lacks rights and legitimate interests in <googleloadfiles.com>;
(ii) Nat’l Westminster Bank plc v. Blues, FA 731824 (Nat. Arb. Forum Aug 7, 2006) – holding that “Respondent is using the disputed domain name to divert Internet users attempting to locate Complainant’s website to a website that is a fraudulent imitation of Complainant’s website . . . such diversion via an imitation website as an attempt by Respondent to pass itself off as Complainant is neither a bona fide offering of goods or services under the Policy”.
· The Complainant alleges that the disputed domain name features services that compete with those offered by Complainant. On the “About Us” page, Registrant offers advertising opportunities and claims “Google Ghana is a website with a vision of providing advertisement on Google [Adwords] for Ghanaians.” Such use is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Name. The Complainant has placed reliance on the decision of this Forum in Google Inc. v. Rusev, FA 466022 (Nat. Arb. Forum June 3, 2004), holding use of a confusingly similar domain name to operate competitive services is not a bona fide offering of goods or services (re <google-bg.com> domain name).
· The Complainant further contends that upon conducting a search, the disputed domain name redirects users to a search results page containing advertising through which Registrant presumably generates revenue from click-through fees. The Complainant alleges that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. In this regard it has placed reliance upon the following decision of this Forum : -
(i) MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) - holding use of the disputed domain name to redirect Internet users seeking Complainant’s website to its own website for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy 4(c)(i) or legitimate fair use pursuant to Policy 4(c)(iii);
(ii) Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) holding that “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, nor a legitimate fair use, under the Policy;
(iii) Genzyme Corp. v. Keyword Marketing, Inc., FA 1007979 (Nat. Arb. Forum July 17, 2007) - holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites.
· The Complainant contends that the Registrant is not commonly known by the name or nickname of the disputed domain name, or any name containing Complainant’s GOOGLE mark. The Registrant’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the mark as Registrant’s name or nickname. In this regard, it has relied upon the decision of this Forum in Popular Enterps., LLC v. Sung-a Jang, FA 811921 (Nat. Arb. Forum Nov. 16, 2006) holding that “respondent’s WHOIS information does not suggest that respondent is commonly known by the <ntester.com> domain name”.
· The Complainant has not authorized or licensed Registrant to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating complainant’s trademark is strong evidence that Registrant has no rights or legitimate interests. See Time Warner Inc. v. MLM Capital LLC, FA 1076561 (Nat. Arb. Forum Oct. 26, 2007).
· Thus, the Registrant has no rights or legitimate interests in the disputed domain name.
· The Complainant claims that the evidence submitted overwhelmingly supports the conclusion that Registrant registered and is using the disputed domain name in bad faith. The Complainant alleges that the fame and unique qualities of the Complainant’s GOOGLE mark makes it extremely unlikely that the Registrant created the disputed domain name independently. The Complainant relies upon the following decisions of this Forum : -
(i) J. Jill Group, Inc. v. Zuccarini, FA 112627 (Nat. Arb. Forum July 1, 2002) – holding that “[b]ecause of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, respondent is thought to have been on notice as to the existence of Complainant’s mark at the time respondent registered the infringing <jjilll.com> domain name. Thus, respondent’s registration despite this notice is evidence of bad faith registration”. Even constructive knowledge of a famous mark like GOOGLE is sufficient.
(ii) Google v. Abercrombie 1, FA 101579 (Nat. Arb. Forum Dec. 10, 2001) – holding that “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]” (re <googld.com> domain name).
· The Complainant alleges that the use of the disputed domain name by the Respondent resolves to a website that imitates Complainant’s website constitutes bad faith registration and use. See Pacificherbal, LLC v. emmerse, FA 1246873 (Nat. Arb. Forum Apr. 6, 2009) (finding bad faith where Respondent’s reproduced Complainant’s entire website); see also Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003) (holding bad faith where the respondent “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
· The claims that the Registrant is prominently featuring a logo that is virtually identical to Complainant’s GOOGLE logo on the website at the disputed domain name. Such use of the GOOGLE logo by the Respondent increases the likelihood of confusion and is further evidence that Registrant is trying to improperly benefit from a perceived association with Complainant. See Google Inc. v. TenerifeSTUDIOS, FA 1290475 (Nat. Arb. Forum Dec. 1, 2009) (holding that evidence of bad faith registration and use where Registrant used <googlepowersearch.com> in conjunction with displaying the GOOGLE mark and logo).
· The Complainant alleges that the 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. See Google Inc. v. Miller, FA 1067791 (holding bad faith where Respondent offered services directly related to Complainant’s YouTube services, but in violation of YouTube’s terms of service, as Respondent was attempting to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the Domain Name).
· The Complainant further contends that the Respondent’s use of the disputed domain name to eventually divert Internet traffic to a website that presumably generates revenue from click-through ads constitutes bad faith use and registration. It has relied upon the following decisions of this Forum : -
(i) REO Speedwagon, Inc. v. Domain Admin., FA 910799 (Nat. Arb. Forum Mar. 23, 2008) – holding that bad faith use and registration found; domain name used to attract Internet users to generate “per click” revenue;
(ii) Google Inc. v. Forum LLC, FA 1053323 (Nat. Arb. Forum Oct. 1, 2007) - finding bad faith registration and use where <googlenews.com> holding that “resolves to a commercial search engine website” generating “click-through advertising fees”. Such use demonstrates Registrant’s intent to attract, for commercial gain, Internet users to Registrant’s web site by creating a likelihood of confusion with Complainant’s Google mark. See ICANN Policy 4(b)(iv).
· The Complainant alleges that the Registrant has failed to comply with demands from Google to cancel or transfer the disputed domain name and to cease use of the GOOGLE logo. Such failure indicates bad faith registration and use of a domain name.
B. Respondent
· The Respondent in its response to the complaint averred that it had purchased the disputed domain name <googleghana.com> legally from GoDaddy.com with a view to offer google services for Ghanaians and other countries closer to it who might need these services, including adsense, adwords, google search etc. It also averred by the Respondent that it had gone ahead and applied for these services from google and the Google (Complainant) had provided them with a custom search which is being used by them from the said date - providing search for Ghanaians over the past years. The Respondent claims that it had run marketing, advertisement and built a client trust over the years with Ghanaians.
· The Respondent avers that it has been providing adwords services with their domain and e-mail info@googleghana.com and google has accepted and worked with them. Respondent contends and questions that if that was illegal, then why did Google (Complainant) allow the Respondent to do that.
· The Respondent claims that it had been providing adsense from the said account for Google through the disputed domain name. The Respondent contends that Google after all these years of spending money, time and resources to bring the awareness of Google and its services in our country, want to bully its way through and stamp on Respondent’s rights to exist as a business.
· Respondents contends that over these years it has worked with companies, and still do and provide them gmail services which Respondent buys from Google. Respondent further contends that they have clients who run adwords from the disputed domain name, provided by google.
· Respondent claims that it has presence over all these years on twitter: <twitter.com/googleghana> and also on facebook running adverts over these years.
· The Respondent questions and contends as to why Complainant is interested only in the disputed domain name, <gogoleghana.com>, and not in “.net” / “.org” which is also registered.
· Respondent states that they would love to continue to work with Google and also have a lasting relationship with its Registrar, godaddy.
· The Respondent contends that it would/may consider transferring the domain to google but only with a settlement for all cost that they have incurred over the years. It also contends that google’s presence in their country is even in doubt which is a subject for discussion as the domain “google.com.gh” itself is in dispute.
C. Additional Submissions
The Complainant made the following additional submissions :
· It is apparent that Registrant registered the Domain Name to attract for commercial gain, Internet users to the Registrant’s website, by creating a likelihood of confusion with Complainant’s mark. Evidently, Registrant has registered and is using the disputed domain name <googleghana.com> that fully incorporates Complainant’s famous GOOGLE trademark; and is operating a commercial website at the disputed domain name; creating an impression to the Internet users that a domain name containing the GOOGLE mark to be sponsored by or affiliated with the Complainant, thereby creating a likelihood of confusion.
· Registrant obtained the <googleghana.com> domain in 2009, which was twelve years after Google was created, three years after Complainant’s first application for GOOGLE in Ghana, eleven years after Complainant’s first application for GOOGLE, and almost as many years after the GOOGLE Mark became well-known. There is no credible explanation for registering a domain name that includes GOOGLE and a geographic term other than hoping or intending to trade-off the goodwill the Complainant has established in its mark GOOGLE.
· Complainant contends that previous Panels in their decisions have noted that any "respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known." Google Inc. v. Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (re <googlesex.com> domain name). Hence, the Registrant has not satisfied and cannot satisfy this standard.
· The Complainant contends that the Registrant admits in its Response that it has registered the disputed domain name <googleghana.com> with the intention to “offer Google services for Ghanaians.” By Registrant’s own admission, Registrant knew of Complainant, Complainant’s Mark, and Complainant’s offerings before registering the disputed domain name with the specific intent to use the disputed domain name to appear to consumers to be associated with or affiliated with Complainant. This knowledge and intent further supports a finding of bad faith registration and use, in addition to evidencing Registrant’ slack of legitimate rights.
· The Response of the respondent does not accurately reflect the relationship between the Registrant and Complainant. Registrant signed up for AdWords and Custom Search Engine (“CSE”) via online clickwrap and an otherwise predominantly automated process. As Registrant’s participation is not the result of a negotiated deal, Google did not review Registrant’s site, screen Registrant’s customer name or e-mail address, or ever agree that Registrant’s site did not violate Google’s terms of use. According to Google’s incorporated branding guidelines, Registrant is not entitled to use any marks or logos other than those specifically provided to designate participation in CSE. Similarly, Registrant is not permitted to choose a name that is similar to the GOOGLE mark.
· Further, Registrant has not provided any evidence of legitimate use of the <googleghana.com> domain. To the contrary, Registrant has always used the Domain Name to resolve to a site misusing Complainant’s Mark and CSE.
· Registrant also misconstrues the availability of Google’s services to people in Ghana. Google’s services are offered online and have been accessible to users in Ghana prior to Registrant registering the Domain Name and purporting to offer “local” services.
· The length of time Registrant has held the Domain Name is not relevant. Laches is not a defense available under the Policy. See 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.”).
· Notwithstanding, there can be no laches in this case because Google contacted Registrant once it became aware of the domain name registration for <googleghana.com>. Google sent communications stating its rights in the mark and requesting transfer of the Domain Name. See Complaint Ex. 11.
· It is clear that Registrant is trying to profit from the Domain Name by noting in its Response that it would consider transferring the Domain Name for compensation for all costs it has incurred in addition to what it is allegedly losing and what its future investment would have brought. It can be inferred that Registrant is offering to sell the Domain Name for an amount greatly exceeding registration fees, which is further evidence of Registrant's bad faith registration and use of the Domain Name. See, e.g., Google Inc. v GOOGLESERVICES, FA 1391118 (Nat. Arb. Forum July 6, 2011) (finding support of bad faith use and registration because “it may be inferred that Respondent had a sum in mind that was in excess of his documented out-of-pocket costs related to the registration of the disputed domain name” when offering to sell a company name and domain name but no particular sum of money was requested); see also Morgan Stanley v. Guerilla Freedom Fighter, FA 1061232 (Nat. Arb. Forum Oct. 2, 2007) (finding respondent's offer to sell the domain name to complainant indicated respondent's bad faith registration and use of the disputed domain name).
· Registrant’s allegations in its Response about the <google.com.gh> domain name are irrelevant and too indefinite to enable Complainant to provide a more detailed response. The existence of third parties owning additional domain names that contain Complainant’s 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.
B. Respondent
The Respondent made the following additional submissions :
· The Respondent contended that it has never intended to create any likelihood of confusion with the Complainant’s trademark. The Respondent contends that in 2005, they had a meeting with the Complainant company to provide services/partnership with Google to which the Vice President of the Complainant while declining the offer of the Respondent had responded that "Google Inc. does not intend to extend services in Ghana now, except in the next 10 years". The Respondent further contends that in 2009 they decided to register our domain to offer similar services to Ghanaians and rather not to use Complainant’s mark/name to confuse the people of Ghana and hence they mentioned on their website, that they have no links with Google (Complainant).
· The Respondent countered that the Complainant has applied for Google in Ghana only after having come to know of certain users already providing the services - offered by Complainant - to the Internet users in Ghana. The Respondent claims that making an application does not mean that the operations have been started and hence cannot be used as evidence or basis of your operation in a particular location.
· The Respondent admits that though their intent was to offer services to Ghanaians but it is not illegal, as Google Inc. also offers these services and has always opened its doors to third parties to offer their services and the Complainant (Google Inc.) pays them commission on the work they do for their client. Hence, the Complainant cannot state that there was an intent of bad faith registration and use except that there was an intention to use the name of the Complainant for phishing and/or to pretend to be or working with Complainant.
· The Respondent contends that if signing for the services of Complainant was inaccurate / illegal, the Complainant could have told it. The Respondent alleges that Complainant’s inability to review its own website, domain and e-mail address cannot be said to be an excuse.
· The Respondent contends that it is legitimately using the disputed domain name as they have clearly mentioned in the website that their intent is to provide google services.
· The Respondent contends that it has been providing search facility for its users with the approval of the Complainant and used it to do adsense and advertised its services on Complainant’s website for free.
· The Respondent alleges that Complainant has not shown its interest / presence in Ghana until it came to know that the ground is now better to make money here.
· The Respondent contends that time when Registrant registered a domain is relevant because that shows the intent as to when it decided to do business. The Complainant in its additional submissions has claimed that it applied for Google in Ghana earlier, if time of registration is irrelevant, why does Complainant want to use it as a defense to support its intent and claim. The Respondent claims that the time of registration is relevant and important since it clearly explains that it has a clear and good intention and did not register the disputed domain name last week to defame or use it with bad intentions.
· Respondent contends that upon receipt of Complainant’s mail pointing out discrepancy in Respondent’s logo, the Respondent had instructed its web agency to check and change and also redesign its website so as to prove that Respondent does not have any bad intention with regard to use of Complainant’s logo/mark.
· The Respondent contends that if the Complainant had been present all these while, then why did it contact the Respondent after 3 years of its existence and operation.
· The Respondent contended that it has not been trying to profit from the disputed domain name but rather has made the Complainant’s mark well known in their part of the world. Respondent’s further contends that even if their intention was to profit from the disputed domain name, then every business is established not as a charitable organisation but rather to make profit, and when Respondent provides gmail services for client, its Complainant that pays us our bonus so why use it against us now.
· The Respondent claims that it had stated that it would transfer the disputed domain name only if the Complainant would bear all the costs. The contention that Respondent is selling the disputed domain name is not true as Respondent is the rightful owner of the disputed domain name and has been doing business through it for the past 6 years out of which 4 years had been through the use of the disputed domain name <googleghana.com>. The Respondent contends that they would not have actually sold the disputed domain name for a fee if it was only a domain that was purchased, rather it had incurred cost to purchase a hosting server for all these years, contracted a company to design website, employed persons for managing the website, advertising all these years and companies already working with us through this site.
· The Panel finds that the Complainant is the owner of the well-known trademark / trade name GOOGLE as well as the domain name GOOGLE.COM, created in the year 1997. GOOGLE is the trademark used to identify search engine, located at <google.com>. The GOOGLE search engine has become one of the most recognized and widely used Internet search engines in the world. The Panel finds that the Complainant owns numerous trademark registrations and applications for its GOOGLE mark in various countries. The Complainant has its trademark registrations in Ghana also in classes 9, 16, 25 & 35 on 12th January, 2006. The disputed domain name was registered by the Respondent in 5th March, 2009.
· With reference to the contention of the respondent that it has been using the disputed domain name <googleghana.com> from 2009, it is to be observed that the respondent has not furnished any evidence of any kind for showing any permission or authorization by the Complainant in its favour for using the word ‘google’ for any of its activities. Further, the fact remains that the Complainant is also having registration of its trademark in Ghana as well besides the mark ‘Google’ is otherwise internationally known.
· The Panel finds that the Respondent has no rights or legitimate interests in relation to the domain name. The Respondent has admitted that their intention was to use the disputed domain name for phishing and/or to pretend to be Complainant or working with Complainant.
· The Panel also finds that the domain name <googleghana.com> deserves to be transferred to the Complainant; the Respondent is not entitled to continue to use this domain name. The Complaint deserves to be allowed and the Panel decides accordingly.
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.
· Complainant submits that it provides search engine and related products and services under its GOOGLE mark. Complainant claims its owns multiple trademark registrations for its GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004) and Ghana’s Registrar General’s Department (“RGD”) (e.g., Reg. No. 36,539 registered January 12, 2006). See Complainant’s Exhibits 8 & 8(a). The Panel finds that evidence of the trademark registrations demonstrates Complainant’s rights in the GOOGLE mark pursuant to Policy 4(a)(i). The Panel finds the following decisions of this Forum to be relevant in this regard :
(i) Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) - holding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world;
(ii) Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) - holding that the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy 4(a)(i).
· There can’t be any doubt with regard to immense popularity and knowledge, all over the world, of the trademark of the Complainant i.e. Google. Inclusion of the entire word ‘Google’ in the disputed domain name, undoubtedly, renders the same to be confusingly similar to the name of the Complainant. Panel finds that the claim of the Complainant Respondent’s <googleghana.com> domain name is confusingly similar to Complainant’s GOOGLE mark because the disputed domain name combines Complainant’s GOOGLE mark with the geographic term “ghana” and the generic top-level domain (“gTLD”) “.com”, as entirely valid and sustainable. The Panel finds that the additions of a geographic term and a gTLD fail to remove the disputed domain name from the realm of confusing similarity. The Panel in this regard finds the following decisions of this Forum to be relevant :
(i) Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) - holding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark;
(ii) Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) – holding that “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”;
(iii) Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) – holding that “The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”;
(iv) Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) - holding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark.
· The Panel concludes that Respondent’s <googleghana.com> domain name is confusingly similar to Complainant’s GOOGLE mark for the purposes of Policy 4(a)(i).
· The Complainant argues that Respondent is not commonly known by the <googleghana.com> domain name. Complainant contends Respondent is not authorized or licensed to use Complainant’s GOOGLE mark in any way. The Panel observes that the WHOIS information identifies “Africahostway Company Limited” as the registrant of the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name <googleghana.com> pursuant to Policy 4(c)(ii). It would be useful to refer to the following decisions:
(i) IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) - holding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name;
(ii) Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) - concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark.
· According to Complainant, Respondent’s <googleghana.com> domain name resolves to a website that imitates Complainant’s website by using Complainant’s search engine technology. In Complainant’s Additional Submissions, the Complainant has stated that Respondent admits that it had registered and began using the disputed domain name for the purpose of offering Complainant’s services in Ghana, which evidences Respondent’s competing use of the disputed domain name. Complainant claims that Respondent uses Complainant’s GOOGLE logo and that the resolving website contains the same search box, text font, and tabs that Complainant’s website contains. Complainant avers that Respondent’s “About Us” page offers services that directly compete with Complainant’s advertisement services. Complainant argues that Respondent also commercially benefits from click-through advertisements that Respondent hosts on its search results page. Complainant includes screenshots of the website that, the Panel observes, appear to corroborate Complainant’s claims. See Complainant’s Exhibit 10. The Panel holds that the Respondent is making neither a Policy 4(c)(i) bona fide offering of goods or services nor a Policy 4(c)(iii) legitimate non-commercial or fair use of the <googleghana.com> domain name. The Panel in this regard finds the following decisions of this Forum to be relevant for the present issue:
(i) Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) - holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name;
(ii) Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) – holding that “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”.
· Complainant also claims that Respondent is attempting to pass itself off as Complainant by imitating Complainant’s website. The Panel agrees with the Complainant and finds that Respondent’s attempt to pass itself off as Complainant further evidences Respondent’s lack of rights or legitimate interests in the <googleghana.com> domain name under Policy 4(a)(ii). In this regard, the Panel relies upon the following decisions of this Forum:
(i) Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) - holding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name;
(ii) Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) - holding that the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).
· The Panel also finds merit in the contentions of the Complainant that delay / laches would not have any bearing on the consideration of the complaint under the policy. The Panel also finds that in the facts and circumstances of the present case, the complainant has not pursued against misuse of the trademark of the complainant ‘Google’ by certain other entities, would not create any right in favour of the respondent.
· Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the <googleghana.com> domain name pursuant to Policy 4(a)(ii).
· In Complainant’s Additional Submission, Complainant argues that Respondent, in its Response, effectively offered to sell the disputed domain name <googleghana.com> to Complainant for more than Respondent’s out-of-pocket costs. Specifically, Complainant claims that Respondent stated it would consider transferring the disputed domain name in exchange for all costs it incurred and future investment the disputed domain name would bring. Based on this offer, the Panel finds that the Respondent registered and uses the disputed domain name <googleghana.com> in bad faith pursuant to Policy 4(b)(i). In this regard, the Panel finds the following decisions to be relevant:
(i) Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) – holding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name;
(ii) World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) - holding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs.
· Complainant asserts that Respondent registered and uses the disputed domain name <googleghana.com> in bad faith by imitating Complainant’s official website and offering advertising and search engine services that compete with Complainant’s services. In Complainant’s Additional Submission, Complainant contends that it offered its services in Ghana prior to Respondent’s registration and use of the disputed domain name. Therefore, Complainant claims that Respondent’s registration and use of the disputed domain name diverts potential users of Complainant’s services to Respondent’s competing services. Complainant alleges that this disrupts Complainant’s business in Ghana. The Panel agrees with the Complainant and concludes that Respondent has registered and uses the disputed domain name <googleghana.com> in bad faith according to Policy 4(b)(iii).
· Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the GOOGLE mark. In Complainant’s Additional Submission, Complainant notes that Respondent states it registered the disputed domain name for the purpose of offering Complainant’s services to the people of Ghana. Complainant claims that this statement evidences Respondent’s actual knowledge of Complainant’s GOOGLE mark prior to Respondent’s registration of the disputed domain name. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent has registered and is using the disputed domain name in bad faith under Policy 4(a)(iii) as the Respondent had actual knowledge of Complainant’s trademark rights. The Panel in this regard relies upon the following decisions of this Forum:
(i) Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) - holding that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith;
(ii) Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) - holding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration.
· Thus, the Panel finds that Respondent’s registration of the disputed domain name constitutes bad faith under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name <googleghana.com> be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 06.02.2012
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