Google Inc. v. Don Sullivan
Claim Number: FA1201001423451
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Don Sullivan (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ggogle.com>, registered with GoDaddy.com, Inc.
The undersigned certify 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. Sir Ian Barker (Chair), Ms Francine Siew Ling Tan, and Hon. John J. Upchurch (retd.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received payment on January 10, 2012.
On January 9, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ggogle.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 January 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 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@ggogle.com. Also on January 11, 2012, 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 February 1, 2012. A timely Additional Submission was received from the Complainant and determined to be complete on February 6, 2012.
On February 16, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker (Chair), Ms Francine Siew Ling Tan and Hon. John J. Upchurch (retd.) as Panelists.
On February 28, 2012, the Respondent filed an Additional Submission. This has not been considered by the Panel because it was filed well out of time and because it failed to address any of the relevant issues.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Delaware corporation which operates one of the world’s largest collection of electronically searchable documents. Its search engine provides advanced technology to allow internet users to seek and find on the internet a wide variety of content.
The Google name was created in 1997 and Complainant’s services have been publicly available under the GOOGLE mark since 1997. Complainant began making commercial use of the mark in 1997. In April 1998, it launched a “Google Friends” newsletter which provided updates about the service and its development to interested users. By June 1999, it had received substantial funding to develop its search engine. This was after significant media attention, news articles and online commentaries chronicling Complainant’s services and the launch and popularity of the search facility. For example, the February 22, 1999 issue of Newsweek described Google as “the net’s hottest new search engine”. By July 1999, Google had attracted positive press coverage from major publications, both national and international. Included in the publications was a local Ohio newspaper, published in close proximity to Respondent’s address as identified in the Whois record. A report about Google in the Akron Beacon Journal appeared as early as July 25, 1999.
Complainant filed its first United States Federal trademark application for the GOOGLE mark on September 16, 1998. It currently owns numerous trademark registrations, both in the United States and internationally. Its first trademark noted that Complainant had used the mark in commerce since September 1997 and in connection with other products and services since early 1999.
Respondent registered the disputed domain name on August 12, 1999. He has benefited substantially from the close identity between the disputed domain name and Complainant’s trademark since then.
Respondent has never made legitimate use of the domain name but has operated a “phishing” scheme thus using the disputed domain name in a manner likely to create confusion when the website is visited by internet users seeking to use Complainant’s search engine.
The disputed domain name resolves to a website purportedly offering users “free” items such as gift cards and iPads. Users are enticed to provide personal information in exchange for a gift. Each gift is linked to a survey whereby users are required to provide email address, postal address, cellphone number and date of birth, in addition to signing up for recurring text messages and plans and other services for a monthly charge. This is a phishing scheme commonly defined as a practice “intended to defraud consumers into revealing personal and proprietary information” often through a website attempting to pass itself off as another entity. See Habitat for Humanity Int’l Inc v Colin Shields, FA 1260203 (Nat. Arb. Forum June 16, 2009).
The disputed domain name is by its very spelling proof of Respondent’s lack of right or legitimate interest in the disputed domain name and/or registration in bad faith.
Since its registration, the disputed domain name has never been used for a legitimate purpose. In addition to the phishing scheme, operating since 2007, the disputed domain name has been used to generate revenue for Respondent in other ways such as providing pay-per-click advertising links, including links to adult websites. As early as 2001, the disputed domain name included the Google search Talkbox and the Google logo, thus reflecting Respondent’s knowledge of Google’s prior rights in the trademark and indicating an effort to cause confusion as to whether the website were affiliated with Google and its services.
By using the disputed domain name, Respondent has capitalized on the similarity between the disputed domain name and the famous GOOGLE mark in order to generate revenue from consumers seeking Google’s services who arrive at Respondent’s website by mistakenly typing the Google name. The disputed domain name generates traffic in respect of 100,000 unique visitors every month. All of this demonstrates bad faith registration and use of the disputed domain name.
On December 8, 2011, Complainant endeavoured to resolve the dispute amicably but there has been no resolution. Respondent refused to transfer the disputed domain name to Complainant unless it gave him money considerably in excess of the legitimate registration charges.
Respondent registered the disputed domain name in bad faith and continues to operate it in bad faith. Complainant had common law rights in the GOOGLE mark as early as 1997 and it is not necessary for them to have had a registered trademark. The effective date of Complainant’s trademark rights dates back to the filing date of September 16, 1998. See Planetary Society v Rosillo, D2001-1228 (WIPO Feb. 12, 2002).
The disputed domain name is confusingly similar to Complainant’s mark. A letter has been interchanged in order to create confusion. This practice is known as “typosquatting” and has been condemned in many decisions under the Policy. Misspelling words or adding letters to words does not create a distinct mark and renders the domain name confusingly similar. See DaimlerChrysler Corporation v Worshipping Chrisler /Chr, aka Dream Media/ aka Peter Conover, D2000-1272 (WIPO Jan. 18, 2001) where it was said by the panel:
“The registration of the domain name appears to serve no other purpose other than to capture the user who mistakenly or inadvertently enters an incorrectly spelt version of the Complainant’s registered trademark when he or she is attempting to access the Complainant’s website.”
Complainant’s trademark is so well-known throughout the world, that it is difficult to conceive of any purported right or legitimate interest which Respondent may have in the disputed domain name. None of the situations under Paragraph 4(c) of the Policy apply to him. He is not commonly known by the disputed domain name, nor did Complainant authorize or license him to use any of its trademarks in any way.
Respondent is not offering bona fide goods or services by redirecting visitors to a website that deceives users into mistakenly signing up for recurring text messages, plans and other unwanted services. He most likely derives substantial profits by redirecting users to such services and by deceiving them into signing up for recurring text message plans at a monthly charge. The use of a nearly identical or confusingly similar domain name to redirect users to a fake survey can not amount to a bona fide offering of services. See Wachavia Corporation v. Carrington, D2002-0775 (WIPO Oct. 2, 2002).
The evidence overwhelmingly supports the conclusion that Respondent registered and is using the disputed domain name in bad faith. The fame and unique qualities of the GOOGLE mark were widely reported by the media prior to registration of the disputed domain name. That fact makes it extremely unlikely that Respondent created the disputed domain name independently. Even constructive knowledge of a famous mark like GOOGLE is sufficient to establish bad faith registration. See Google v. Abercrombie, FA 101579 (Nat. Arb. Forum December 10, 2001), where it was said:
“Because of the famous and distinctive nature of the Complainant’s GOOGLE mark, the Respondent is thought to have been on notice of the existence of the Complainant’s mark at the time the Respondent registered the infringing domain name.”
It is impossible to conceive of any legitimate use of a domain name which is nearly identical to the Complainant’s famous mark. In fact, where a domain name is so obviously connected with such a well-known name and products “use by someone with no connection with the products” suggests opportunistic bad faith. See Parfums Christion Dior v. Gaveier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
Phishing has been held to be evidence of bad faith registration and use, as is Respondent’s refusal to transfer the disputed domain name unless he receives “substantial compensation”.
B. Respondent
Respondent is a “professional software developer” with 30 years programming and architecture experience. His primary skills are said to be in ideation, i.e. coming up with new ideas, different concepts and technologies and looking at things in an unusual way.
In the late 1990s, the internet was growing rapidly and domain names, particularly .com domains were being registered quickly. It became widely known that a .com domain name could prove useful in promoting a product. Respondent owns several domain names registered to promote products of his own design or inception. He does not actively speculate in domains and is not in the domain name business.
Shortly after he registered the disputed domain name, Respondent received emails offering to buy it. He pointed the disputed domain name to one of his sites – <zoeo.com>. It became apparent at that time that people were arriving at that site because they had “fat-fingered” <google.com>. That was why Respondent was getting offers to buy the disputed domain name. To increase its brand awareness, Google offered him a hotmail spot to put on the site to provide a Google search to anyone who needed it. It seemed a reasonable thing to do, put one on the <zoeo.com> site to save anyone the trouble of re-entering the Google domain name if they happened to visit his site.
After 9/11, Respondent found less time to prototype new ideas and was unable to find venture capital. Accordingly, he took advantage of GoDaddy’s cash domain programming and entered the click-through site system.
Respondent denies that he is “phishing”. He quoted a Wikipedia definition of “phishing” as “a way of attempting to acquire information such as user names, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication.” He is not doing this.
In 1997, the most widely-used search engines on the web were operated by others than Google which was then offering computer services. Respondent denies that Complainant had a common law trademark in 1997 because the search engine was not being used for commercial purposes. It was being operated at a university and, at that stage, Google’s services were not operating for profit. The massive search engine and data archive was not protected by trademark until November 2000. Many of the attributes which make up the Google website into a viable commercial product did not exist in 1997, because this was a “credit college project”.
The claim that the registration of the disputed domain name was intended to take advantage of Google fame is false. Google had very little fame at the time of registration of the disputed domain name.
Respondent denies any trademark infringement. He does not pass off or misrepresent any product or services offered by Complainant. There is no confusion because he does not offer a computer search or web search for responses. The GOOGLE mark was not synonymous with a computer search prior to registration of the disputed domain name. It is unlikely that visitors believe that the content they find through Respondent’s site is published by the Complainant since he does not display any mark similar to the Complainant’s on any web page. He does not intend to market any goods or services which the Complainant currently offers such as computing or web searching.
As to the negotiations for a settlement, Respondent has always responded to various approaches from attorneys representing the Complainant. He claims that he “registered the domain name for use with a product to aid the blind”. He detailed negotiations, including his last offer (now withdrawn) to sell the disputed domain name for $2,000. He chose the disputed domain name independently and in good faith long before the Complainant enjoyed the fame of the publicly-funded multi-national corporation it is today.
Respondent alleges reverse domain name hijacking against the Complainant. The disputed domain name was registered in good faith and without knowledge of the Complainant’s existence. It still holds considerable value and has been used to promote a product that the Complainant does not offer.
Complainant’s allegations were made to elicit prejudice. The poor attempt to settle the dispute shows that the clear aim is to reverse domain name hijack the disputed domain name.
C. Additional Submissions
The uncontroverted evidence supports findings as follows:
(a) As at the date the Respondent registered the disputed domain name in August 1999, the Complainant had developed protectable rights in its mark and had already attracted widespread media attention nationally and internationally.
(b) The Respondent has made no legitimate use of the disputed domain name. His bald assertion that the disputed domain name was obtained for use in connection with a device for the visually-impaired is not supported by evidence.
(c) The Respondent has reaped profits over the years through the operation of the website.
(d) The Respondent refused to settle the dispute and has sought compensation well in excess of out-of-pocket expenses.
Complainant elaborates on these basic submissions at great length, far longer than is normal or permissible on an Additional Submission. The Panel does not see it necessary to reproduce these submissions in extenso. The following is a summary of these further submissions.
Respondent ignores the press coverage and screenshot which reflect widespread consumer use of the Google search engine services (not on a university website) prior to registration of the disputed domain name. These prior rights are uncontroverted and a common law trademark is all that is required to be proved under the Policy.
Complainant’s trademark rights date back to the date of filing of the trademark application in 1998 which precedes the date of registration of the disputed domain name. Respondent has submitted no proof he has ever designed a device for the visually-impaired or that he has any experience in this area or any intention to bring such a device under the mark GGOGLE which is phonetically unpronounceable and confusing.
The more likely conclusion to be borne from Respondent’s experience in the computer area is that he was familiar with Google’s increasing popularity in August 1999 and he therefore decided to profit from using the disputed domain name to trade on misdirected traffic. A mere claim of legitimate interest without corroborating evidence is insufficient to establish rights or interests in the disputed domain name without proof.
The history of Respondent’s use of the disputed domain name, uncontroverted by Respondent, shows that, over the years, he has been using the disputed domain name to reap commercial benefit based on the confusing similarity with Complainant’s trademark. The use of a disputed domain name to generate revenue is neither an offering of bona fide goods nor a legitimate non-commercial or fair use.
The test for determining bad faith is evaluating whether the objective consequence or effect of a respondent’s conduct constitutes a free ride on a complainant’s goodwill, whether or not that was the primary intent of the respondent.
Respondent’s claims of good faith stretch the bounds of credulity in view of the uncontroverted facts, such as he is a software developer with 30 years of programming experience with substantial familiarity with the state of the internet in the 1990s. He registered domain names throughout the late 1990s at a time when many people were only vaguely familiar with the internet. Therefore, he should or would have known of Google when he registered the disputed domain name.
To Respondent’s claim that the website content was created by a third party, internet users could easily believe that Respondent’s website was a promotion offered by Google, relying on their faith in the Google brand to select the various offers to claim free gifts, which requires those who want a gift to enter all information “exactly as it appears in your driver’s licence or other government-issued identification”. Such persons are also required to provide the last four digits of their Social Security number.
The “fine print” states that users must activate credit cards, close and fund home loans, install satellite and security systems and complete other steps to collect the promised reward. These plans, offers and promotions must generate considerable revenue for Respondent from misdirected consumers.
Respondent redirects other domain names that he owns that are confusingly similar to well-known brands such as Whitter.me.
Whilst Respondent goes to great lengths to cast himself in a positive light, his knowing abuse and deception of Google users over the years for his own financial gain demonstrates a pattern of behaviour that refutes his claims of good faith.
(a) The disputed domain name is confusingly similar to the trademarks in which Complainant has rights.
(b) Respondent has no legitimate right or interest in respect of the disputed domain name.
(c) The disputed domain name has been 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.
In the Panel’s view, the disputed domain name <ggogle.com> is confusingly similar to Complainant’s trademarks for Google. This is a clear case of typosquatting by using a domain name which is confusingly similar to a trademark with the change, addition or omission of a single letter. See The WIPO Panel Views on Selected UDRP Questions (2nd Edn) (“WIPO Overview”) where at paragraph 1.2 it was said:
“The Consensus view is “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark where the misspelled trademark remains the dominant or principal component of the domain name”.
Indeed, Respondent seems to recognize this fact when he refers to users arriving at his site “because they had fat-fingered Google.com”.
Paragraph 4(a)(i) of the Policy has been established.
Complainant gave Respondent no right to reflect its trademark in a domain name. It would be possible for the Respondent to establish one of the situations under Paragraph 4(c) of the Policy as a defence under this limb of the Policy.
In the Panel’s view, Respondent has not done so. The only possible part of Paragraph 4(c) that could possibly apply in this case is whether Respondent has established that he has made demonstrable preparations to make a bona fide offering of goods and services through the website accessed by the disputed domain name. All that he has offered is a vague unsubstantiated reference to a programme to assist visually-impaired persons. No evidence in support of this assertion is made, no evidence as to what preparations (if any) to establish such a programme are given. The Panel can not just act on broad assertions without any form of evidence in support.
Moreover, the use made by Respondent of the website accessed by the disputed domain name cannot possibly be described as opereating with a legitimate right or interest. He is “cashing in” on the fame of Complainant’s mark with persons who might inadvertently mistype the name “Google” and who are in fact being lured into a “phishing” scheme. The authorities make it clear that Respondent’s operation which has been described by Complainant as a “phishing” scheme is just that. Persons are enticed onto the internet with the promise of a free gift of reasonably high value, such as an iPad, in return for which they have to supply all sorts of personal details, including Social Security numbers and contact details. They incur a liability for monthly charges for receiving information they probably do not want and which they had not bargained on when they entered the site for a free gift. This is clearly an illegitimate scheme which seeks to ascertain personal details from internet users. The uses of these details can be imagined. They would not be for the benefit of the hapless internet users.
Moreover, the provision of a ‘click-through’ service such as had been provided at some stage of the life of this website is not a legitimate right or interest. The Respondent is making money through the click-through service and must be responsible for the contents of the website.
Accordingly, Paragraph 4(a)(ii) of the Policy has been established.
Under the Policy, a complainant has to prove separately both registration and bad faith use. Clearly, the current use of the website for “phishing” illustrates bad faith use. The more difficult question is whether, in 1999 at the time of the registration of the disputed domain name, there was bad faith on the part of the Respondent.
The Policy is deficient in that it has no time limit within which a trademark owner must bring a complaint. In this respect it is unlike the Nominet policy (in use for .uk and .nz domain name disputes) which specifies that conduct taking place more than three years before the date of filing of a complaint can not be taken into account by a panelist. Whilst a three year limitation might be thought rather short, a period of over 12 years (as is the case in the present) must clearly be an excessive time within which a complainant may bring a complaint.
Whilst Complainant has offered no reason as to why it has taken it so long to bring this complaint, the Panel does not agree that the equitable doctrine of laches has any application under the Policy. If it were to be a limitation period for filing it would have to have been expressed in the Policy and it has not been.
In the circumstances of this case – despite the inordinate delay by Complainant in bringing a Complaint – the Panel is able to infer bad faith registration by Respondent for the following reasons:
(a) As at the date of registration of the disputed domain name in August 1999, Complainant had already filed for trademark protection and had already gained considerable publicity in both the technical press and in the national and international media. The Panel agrees that with the authorities cited earlier that the trademark protection relates back to the date of filing of the trademark application which was a year or so before the registration of the disputed domain name.
(b) Respondent on his own admission is a person interested in and working with the internet and computers. The Panel infers that he would have known of the fame of Google at the time of registration of the disputed domain name.
(c) The very name that he chose for the domain indicates that it is likely that he would have known of Google. Otherwise, why would he have registered a domain name which is the same except for one letter.
In all these circumstances, the Panel is prepared to accept that not only is there bad faith use but there was bad faith registration back in 1999. Accordingly, paragraph 4(a)(iii) of the Policy is established.
Reverse Domain Name Hijacking
This was a somewhat cheeky application by Respondent which in light of the decision just made need not be considered.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ggogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker QC, (Chair) on behalf of the Panel
Dated: March 1, 2012
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