Google Inc. v. -googleemail a/k/a
googleemail.com
Claim Number: FA0401000232960
PARTIES
Complainant
is Google Inc., 2400 Bayshore
Parkway, Mountain View, CA 94043 (“Complainant”), represented by Rose Hagan of Google Inc. Respondent is -googleemail a/k/a googleemail.com, 666 Screw You Lane,
Bite Me, CA 90210 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <googleemail.com> registered with Enom, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Ms.
Linda M Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on January 28, 2004; the Forum received a hard copy of the Complaint on February
9, 2004.
On
February 9, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <googleemail.com> is registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
February 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 2, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@googleemail.com by e-mail.
A
timely Response was received and determined to be complete on March 2, 2004.
On March 16, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Ms. Linda M.
Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent’s domain name <googleemail.com> is
confusingly similar to its trademark GOOGLE both in the United States and elsewhere;
that Respondent does not have any rights or legitimate interest with respect to
the domain name <googleemail.com>, and that the domain name was
registered and being used by Respondent in bad faith as evidenced by
Respondent's providing false address information in the WHOIS record,
prominently displaying the name “GOOGLEEMAIL” in font and colors similar to
that of the famous GOOGLE logo, and registering the domain name primarily for
the purpose of renting or selling the name for valuable consideration well
beyond Respondent's out of pocket expenses.
B. Respondent
Respondent
contends that the domain name <googleemail.com> is not confusingly
similar to the mark GOOGLE. Respondent
contends that it has a legitimate interest in the domain name and has not acted
in bad faith since the domain name in question is merely the derivative of a
character in the movie Shrek named “GooGleeBear.”
FINDINGS
The Panel finds that each of the
submissions of the Complainant and Respondent was timely and properly
made. The Panel has considered all
submissions made by the parties in reaching its decision.
Complainant Google Inc. is one of the
largest, most highly recognized and used online search services in the world,
responding to more than 200 million search queries per day. Google Inc. offers co-branded web search
solutions via partnerships with more than 130 companies in 30 different
countries.
Complainant is the owner of several U.S. Trademark
applications for the GOOGLE mark, including Serial No. 75/554461 covering
computer hardware and software in class 9 and Serial No. 75/978469 covering
search and communication services in classes 38 and 42. Additionally, the Complainant owns
registrations for the GOOGLE mark throughout the world. Lastly, Complainant
owns the domain name GOOGLE across numerous top-level extensions.
The domain name at issue, <googleemail.com>, directs Internet users to a website
called “BOOBLE” located at <booble.com>.
The website <booble.com> features a search engine in the field of
adult and erotic materials.
When Complainant originally filed the
complaint that initiated this proceeding, Respondent used the <googleemail.com>
site in connection with a webpage offering and advertising free e-mail
services. The website offered users
e-mail addresses ending with “@googleemail.com.” Shortly thereafter, on or about December 16, 2003, Complainant
discovered that the domain name <googleemail.com> forwarded to
<links411.com>, another
website promoting free e-mail services.
In response to Complainant's cease and
desist letter, Respondent suggested the domain name <googleemail.com> is
pronounced “GO” “GLEE” “MAIL” in an effort to distinguish the domain name from
the famous GOOGLE mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant
owns legal rights in the GOOGLE trademark in the United States and a
significant number of other countries.
Respondent's domain name <googleemail.com> fully
incorporates Complainant's well-recognized trademark GOOGLE. Specifically, Respondent's domain name <googleemail.com>
is nothing more than Complainant's mark GOOGLE coupled with the generic
wording EMAIL (GOOGLE EMAIL).
Additionally, Respondent has prominently displayed on its website the
name “GOOGLEEMAIL” in font and colors similar to that of the famous GOOGLE
logo.
The
respective services of the Complainant and Respondent are closely related since
both provide online search services; Complainant provides traditional search
engine services, while Respondent provides a search engine in the field of
adult and erotic content. Moreover,
prior to Respondent's use of the domain name for adult and erotic search engine
services, the Respondent used the domain name in relation to a site offering free
e-mail services. Since many search engine
services also provide free e-mail (Yahoo, MSN/HOTMAIL), the original use by the
Respondent was also arguably related to that of Complainant.
Accordingly,
this panel finds that the
domain name <googleemail.com> is confusingly similar to the Complainant's mark GOOGLE.
The Panel concludes that the Respondent
has not presented sufficient evidence that it owns any rights or legitimate
interest in the domain name <googleemail.com> prior to
Respondent’s notification of the dispute between the parties. Respondent is not using the domain name in
connection with a bona fide offering of goods or services. Respondent is not commonly known as <googleemail.com>. Respondent may have registered <googleemail.com>
in anticipation of Complainant's entering the free e-mail services arena, i.e.,
with the hope that Respondent would see some commercial gain.
Neither Respondent’s former use of the
domain name to offer competing search engine services nor its current use of
the domain name to trade on Complainant’s goodwill in its GOOGLE mark for
commercial gain constitutes a bona fide offering of goods and services
under Policy ¶ 4(c)(i). See Ciccone
v. Parisi & “Madonna.com”, D2000-0847 (WIPO Oct. 12, 2000) (holding
that “use which intentionally trades on the fame of another cannot constitute a
‘bona fide’ offering of goods and services.
To conclude otherwise would mean that a Respondent could rely on
intentional infringement to demonstrate a legitimate interest, an
interpretation that is obviously contrary to the intent of the Policy.”); see
also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“Bona
fide use does not exist when the intended use is a deliberate infringement of
another’s rights.”).
Moreover,
Respondent is not and has not been commonly known by the disputed domain
name. Respondent is not making
legitimate, noncommercial or fair use of the disputed domain name, without
intending to mislead and divert consumers or to tarnish Complainant’s GOOGLE
mark for commercial gain. See Google Inc. v.
Freije,
FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (“[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.”)
The Panel concludes that Respondent does
not have any rights or legitimate interest as defined by the Uniform Domain
Name Dispute Resolution Policy.
Respondent
was obviously aware of Complainant's GOOGLE mark when registering the domain
name, <googleemail.com>, since Respondent clearly depicted
on the resolving site the wording “GOOGLEEMAIL” in a font and colors similar to
that of the famous GOOGLE logo.
Furthermore, because Respondent knew of Complainant’s trademark GOOGLE,
its registration and use of the domain name for commercial gain suggests
opportunistic bad faith given the widespread use and fame of Complainant’s
GOOGLE mark and name. See Google
Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 25, 2002) (finding opportunistic
bad faith where the respondent registered domain name with knowledge of
Complainant's GOOGLE mark and used the website to trade on Complainant’s fame
and goodwill).
Respondent’s activities indicate that Respondent
registered the disputed domain name for the specific purpose of trading off the
name and reputation of the Complainant.
See Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the Complainant’s well known
marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
Respondent had engaged in bad faith use and registration by linking the domain
name to a web site that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
web site by creating a likelihood of confusion with the Complainant’s marks).
As
further evidence of bad faith, Respondent amended its WHOIS information to
include a fraudulent address and telephone number (666 Screw You Lane, Bite Me,
California).
In summary, this Panel finds that the domain name <googleemail.com>
is confusingly similar to Complainant's GOOGLE trademark, that the
Respondent has no rights or legitimate interest in the domain name, and that
Respondent has used the domain names in bad faith.
DECISION
The
Complainant has all three elements required under the ICANN Policy;
accordingly, the Panel directs that the requested relief be GRANTED.
Accordingly, it is Ordered that the <googleemail.com>
domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: March 30, 2004
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