Google Inc. v. Gigaton IDC Inc / Lian zhijie
Claim Number: FA1201001422464
Complainant is Google Inc. (“Complainant”), represented by Anne H. Peck of Cooley LLP, California, USA. Respondent is Gigaton IDC Inc / Lian zhijie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googla.com> and <googleim.com>, registered with Enom, 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.
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2012; the National Arbitration Forum received payment on January 5, 2012.
On January 4, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <googla.com> and <googleim.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@googla.com and postmaster@googleim.com. Also on January 6, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 deficient on January 27, 2012. The Response was deemed deficient because it was received only in the Chinese language, and the Domain Name Registration Agreement is in English, thereby making the language of the proceedings English under Rule 11.
On February 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Google, Inc. (“Google” or “Complainant”) is a Delaware corporation having its principal office in Mountain View, California.
Google owns and operates a search engine available to Internet users under the name GOOGLE (the “Google Mark”) and offers a wide range of other products and services in addition to that, using the Google Mark.
Google owns numerous trademark registrations for the GOOGLE Mark dating back to as early as 1999. In China, Google’s earliest trademark applications were filed in 1999 and registered September 28, 2000. Its GOOGLE Mark was first registered with the United States Patent and Trademark Office (“USPTO”) January 20, 2004 (No. 2,806,075). Each registration remains valid and in full force and effect.
According to the WHOIS database, Respondent is an entity located in China. Respondent registered the disputed domain names (the “Domain Names”) on the following dates: <googla.com> on November 13, 2000, and <googleim.com> on April 8, 2006.
The Domain Name <googleim.com> incorporates the Google Mark in its entirety, and is confusingly similar to the GOOGLE Mark. Respondent’s inclusion of the term “IM” at the end of the <googleim.com> Domain Name calls to mind services or features that are or could be offered through Google. “IM” is a frequent acronym for “instant messaging” whereby two or more computer users send real-time text-based communications to one another. This calls to mind the “chat” function on Google’s GMAIL email platform and the Google Talk software, which permit users to communicate in a similar format. Regardless of the reason for including this term in the Domain Name, the fame of the distinctive GOOGLE Mark and the non-distinctiveness of the added term, “IM,” will cause users encountering this Domain Name to mistakenly believe the Domain Name originates from, is associated with, or is sponsored by Google.
The Domain Name <googla.com> resolves to a site that blatantly copies the GOOGLE logo and main webpage, and creates confusion as to whether the website is sponsored by, endorsed by, or affiliated with Google. The website’s striking similarity to Google’s own site is immediately evident upon visiting the webpage.
In registering the <googla.com> Domain Name, Respondent has switched the letter “e” with the letter “a” at the end of the famous GOOGLE Mark. This edit does not create a recognized term and appears intended to capitalize on user misspellings or typographical errors (the “a” and “e” keys are nearly adjacent on the keyboard). As such, the <googla.com> Domain Name is confusingly similar to the GOOGLE Mark.
Respondent has no right or legitimate interests in the GOOGLE Mark. Google has not authorized Respondent to register or use either Domain Name, and Respondent can show no right or legitimate interests in either because the GOOGLE Mark is so well-known.
Respondent is not commonly known as the Domain Names or any name containing the GOOGLE Mark. The WHOIS information lists “Gigaton IDC Inc / Lian zhijie” as the registrant and makes no mention of the Domain Names or the GOOGLE Mark as Respondent’s name or nickname.
With respect to the Domain Name <googla.com>, Respondent has engaged in “typosquatting,” a process in which a domain name registrant attempts to register a confusingly similar domain name that differs from a protected mark only slightly by taking advantage of common typing errors. This demonstrates a lack of rights or legitimate interests.
Respondent uses the Domain Name <googla.com> to divert users to a search engine website that mimics the look and feel of Google’s own website. Using Complainant’s mark to divert Internet users to a website with competing goods is not a bona fide offering of goods and services.
Respondent was fully aware of Google and its GOOGLE Marks at the time he registered the Domain Names. The fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Names, make it extremely unlikely that respondent created the Domain Names independently. This demonstrates bad faith registration and use.
Respondent’s current use of the Domain Names to generate revenue also constitutes bad faith registration and use. The Domain Name <googleim.com> resolves to a website which sells domain names. The Domain Name <googla.com> resolves to a search engine that also appears to generate income through the provision of an advertising service, and mimics the look and feel of Google’s website. Such use also demonstrates Respondent’s intent to attract Internet users to Registrant’s web sites for commercial gain by creating a likelihood of confusion with Complainant’s GOOGLE Mark. This also is evidence of bad faith registration and use.
Given Respondent’s registration of multiple domain names that are nearly identical to Complainant’s famous GOOGLE Mark and its use of one of the Domain Names in connection with a website that is nearly identical in layout and appearance to Google’s website, it is impossible to conceive of any potential legitimate use of the Domain Names. As such, the Domain Names are being used in bad faith.
Confusing users in order to attract them to a competitor website supports a finding of bad faith registration and use.
Where, as in this case, a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.
Finally, Respondent has failed to respond favorably to Google’s efforts to resolve this dispute amicably. Such failure to respond supports a finding of bad faith registration and use of a domain name.
B. Respondent
The Panel is not able to read the Response, as it was submitted in Chinese.
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 makes the findings and determinations set forth below with respect to the Domain Name.
Preliminary Issue: Deficient Response
On January 4, 2012, the Registrar, eNom, Inc., verified that the Domain Names were registered to Respondent and that the language of the Registration Agreement was English. On January 8, 2012, Respondent submitted a Response that was written in Chinese only. Under ICANN Rule 11, the language of the Registration Agreement is the language of the UDRP proceedings. On January 9, 2012, Respondent was informed that it had until January 26, 2012 to submit an English version of its Response, but the Forum has not received any additional documents from Respondent. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response”). This Panel is normally open to exercising its discretion in favor of accepting and considering a response that may not meet the strict requirements of the Policy and applicable Supplemental Rules of the Forum if it asserts a reasonably arguable claim of defense and is reasonably timely. Because the Response in this case was written only in Chinese, the Panel is not able to evaluate any matters Respondent may have wished to present and will decide the case based solely upon the matters presented by Complainant.
Complainant has protectable rights in the GOOGLE Mark within the meaning of Policy ¶ 4(a)(i) through an array of trademark registrations that it owns around the world. Two such registrations are those with the USPTO (Reg. No. 2,806,075 registered January 20, 2004) and with China’s State Administration for Industry and Commerce (Reg. No. 1,451,705 registered September 28, 2000). Based upon this evidence the Panel finds that Complainant has fully established its rights in the GOOGLE Mark for the purposes of Policy ¶ 4(a)(i). 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding 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)).
The Panel further finds that the Domain Names are confusingly similar to the GOOGLE Mark. The <googla.com> Domain Name contains a misspelled version of the GOOGLE Mark by replacing the letter “e” of the GOOGLE Mark with the letter “a,” while also adding the generic top-level domain (“gTLD”) “.com.” The <googleim.com> Domain Name contains Complainant’s GOOGLE Mark entirely, while adding the term “im,” which Complainant argues is the common acronym for “instant messaging” and is descriptive of its services. Further, this Domain Name also adds the gTLD “.com.” Such changes and additions are not sufficient to distinguish the Domain Names from the GOOGLE Mark for the purposes of Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that the Domain Names are identical or confusingly similar to the Google Mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by the following circumstances: (1) Respondent is not commonly known by the Domain Names, as the WHOIS information identifies “Gigaton IDC Inc / Lian zhijie” as the registrant; (2) Complainant has not authorized or licensed Respondent to use its GOOGLE Mark; (3) It is not possible for Respondent to show any right or legitimate interests in either Domain Name because the GOOGLE Mark is so well-known. See Google Inc. v. Mikel M Frieje, FA011000102609 (Nat. Arb. Forum Jan. 11, 2002); (4) “Typosquatting” with respect to the <googla.com> Domain Name demonstrates lack of right or legitimate interests in that name. See Time Warner Inc. v. Zone MP3, FA0706001008035 (Nat. Arb. Forum July 25, 2007), accord IndyMac Bank F.S.B. v. Ebeyer, FA0307000175292 (Nat. Arb. Forum Sept. 19, 2003); and (5) The <googla.com> Domain Name resolves to a website that looks nearly identical to Complainant’s <google.com> website, enabling Respondent to profit from such use through the “provision of an advertising service” which copies the look and feel of Complainant’s website; this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003). On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent has failed to offer any evidence in support of any claim of right or legitimate interests in either Domain Name. Accordingly, the Panel concludes that the Respondent has no right or legitimate interests in respect of either Domain Name.
Respondent registered the <googla.com> Domain Name, a misspelled version of Complainant’s mark, and the website that resolves from it is nearly identical to Complainant’s official <google.com> website. This is evidence that Respondent registered and used the <googla.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Further, Respondent is using both of the Domain Names in an effort to gain commercially from Complainant’s mark. Respondent uses the <googleim.com> domain name in order to receive affiliate or other fees for redirecting Internet users to an unrelated third-party website that offers domain names for sale. Second, as stated above, Respondent is using the <googla.com> domain name to resolve to a website nearly identical to Complainant’s <google.com> website. Respondent profits from this use through the “provision of an advertising service,” which copies the look and feel of Complainant’s website and services. This also is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Further, Respondent’s use of the <googla.com> Domain Name is an attempt to pass itself off as Complainant in that the resolving website copies the look and feel of Complainant’s <google.com> website and offers nearly identical services. This “passing off” use is also indicative of bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Respondent’s “typosquatting” through its registration and use of the <googla.com> Domain Name is further evidence that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Complainant 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. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel concludes that, given the widespread, almost universal fame and notoriety of the GOOGLE Mark, Respondent had to have had actual knowledge of it at the time it registered and began using the Domain Names. This also is evidence of bad faith within the meaning of Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating 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); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
For the reasons set forth above, the Panel concludes that the Respondent registered and is using both Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googla.com> and <googleim.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 8, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page