DECISION

Google Inc. v. Jon G.

Claim Number: FA0203000106084

PARTIES

Complainant is Google Inc., Mountain View, CA (“Complainant”) represented by Julia Anne Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.  Respondent is Jon G., Hong Kong (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <googel.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 22, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.

On March 22, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <googel.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2002 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@googel.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <googel.com> is confusingly similar to GOOGLE, a registered mark in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant’s <google.com> website was created in 1997 and has since become one of the largest, most highly recognized, and widely used Internet search services in the world.  The search engine has indexed over 2 billion web pages and responds to over 100 million search queries per day.  According to Nieslen//NetRatings, Complainant’s website was the fifth most popular web property for the week ending March 10, 2002, with a “unique audience” of over 10 million users.

Complainant currently has trademark applications pending in the United States that were filed in September 1998, as well as a registered trademark in Hong Kong, Respondent’s place of residence (Reg. No. 16817/1999, Sept. 16, 1998).

Respondent registered the disputed domain name on January 24, 2001, and has used the domain name to provide Internet search services that compete with those of Complainant.  Complainant has demonstrated that Respondent’s search services are provided by <7search.com>, a company that pays website operators to link their websites to its search engine through an affiliate program.  In addition to providing competing search services, Respondent’s website also indicates that “Your Googel Family Geneology [sic] Center [is] Coming soon.”

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has demonstrated its rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i) through registration with the Hong Kong Trade Marks Registry and continuous subsequent use.

The disputed domain name <googel.com> is confusingly similar to Complainant’s GOOGLE mark, as it merely transposes the “e” and “l” and adds “.com,” a generic top-level domain (“gTLD”); the disputed domain name is also confusingly similar to  Complainant’s domain name <google.com>. 

The transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.  See Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark).

Further, the addition of a gTLD to the domain name is not significant in determining whether it is confusingly similar to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a gTLD is without legal significance since use of a gTLD is required of domain name registrants).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the GOOGLE mark.  Because Respondent has not filed a Response in this matter, the Panel may presume it has no such rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent, by linking <googel.com> to Complainant’s competitor’s search engine, has demonstrated that it has no rights or legitimate interests in respect of the domain name.  Infringing on another’s trademark rights to assist a competitor of the trademark holder does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Additionally, there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  Respondent is only known to this Panel as “Jon G.”  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests where Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Finally, the Panel concludes that the “coming soon” statement on Respondent’s website is pretextual.  Respondent has provided no evidence that it actually plans to host a genealogy website; moreover, Respondent does not even appear to know how to spell “genealogy.”  Over one year has passed since Respondent registered the disputed domain name, and yet, there is no sign of any progress toward the creation of an alleged genealogy site.  Thus, Respondent’s unsupported statement that a potentially legitimate website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii).  See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding Respondent’s unsupported claim that a consumer chat website would be forthcoming did not rise to the level of rights or legitimate interests under Policy ¶ 4(a)(ii)).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the disputed domain name, which is confusingly similar to Complainant’s well known mark, in order to profit by offering services in competition with Complainant.  Such behavior demonstrates an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source or sponsorship of Respondent’s site.  This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offered a number of web services in competition with Complainant).

Complainant further asserts that, due to the notoriety of its mark, Respondent was on notice as to Complainant’s rights therein.  See Google, Inc. v. Abercrombie 1, FA 101579 (Nat. Arb. Forum Dec. 10, 2001) (“[B]ecause 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 <googld.com> domain name”).  As such, Respondent’s registration and use of the confusingly similar domain name, without explanation, demonstrate an opportunistic bad faith attempt to trade on Complainant’s fame and goodwill.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name were in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <googel.com> domain name be transferred from Respondent to Complainant.  

Judge Harold Kalina (Ret).

Dated:  April 26, 2002

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