WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google, Inc. v. N and Leonard Bensonoff
Case No. D2001-0060
1. The Parties
Complainant is Google, Inc., a California (USA) corporation, 2400 Bayshore Parkway, Mountain View, California USA, represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner of Washington, DC USA (the Complainant).
Respondents are N and Leonard Bensonoff, both of 3003 West Stovall Street, Tampa, Florida USA (the Respondents).
2. The Domain Name and Registrar
The domain name at issue is . It is referred to as the Domain Name. The registrar is R.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on January 12, 2001 (electronic version) and January 15, 2001 (hard copy). The Center verified that the complaint satisfied the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On January 17, 2001, the Center transmitted, via email to R, a request for registrar verification in connection with this case. On January 17, 2001, R transmitted via email to the Center its Verification Response, confirming that the Respondent N is the registrant, that the contact for administrative and billing matters is Respondent Bensonoff, and that the contact for technical matters is support@, at the same address as the Respondents.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on January 19, 2001, the Center transmitted to the Respondents Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, telefax, and e-mail. The postal addresses used for Respondents was as follows:
N
3003 West Stovall Street
Tampa, Florida 33629 (USA)
No reply having been received, on February 8, 2001, the Center notified Respondents of their default.
The formal date of the commencement of this administrative proceeding is
January 19, 2001.
On February 16, 2001, in view of the Complainant's designation of a single panelist (but without prejudice to any election to be made by the Respondent) the Center invited Richard G. Lyon to serve as a panelist.
Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of March 11, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.
The Administrative Panel shall issue its Decision based on the Complaint, the evidence presented by Complaint, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
As Respondents have not submitted a response or other materials, the factual discussion comes from the Complaint and its attachments, one of which is an email message from Respondent Bensonoff to Complainant's counsel.
Complainant owns and operates the well-known google Internet search engine, available to Internet users at its website, . It has used the google name in commerce since September 1997, and has applied for United States trademark applications for GOOGLE in computer hardware (Class 9) and computer services (Class 42). It has registered marks for GOOGLE in Hong Kong, South Korea, Mexico, New Zealand, and Switzerland, and similar applications pending in eleven other jurisdictions. It owns the domain name , registered in September 1997. An Internet user desiring to use Complainant's search engine logs on through this site.
Complainant has not licensed Respondents to use its marks or its name.
Respondents registered the Domain Name on July 4, 2000. Complainant apparently became aware of the Domain Name on December 30, 2000, upon receipt of an email message from one of its users, in which the user reported accidentally typing in a second "g" at the beginning of and reaching a series of pornographic web sites as a result. On January 2, 2001, Complainant's counsel verified that entry of the Domain Name resulted in redirecting the user to www.XXX (owned by Respondent Bensonoff) and a second pornographic web site. Once at the former site the user was unable immediately to close the window to exit by clicking on the button at the upper left of her computer, being presented instead with with successive browser windows, some of them pornographic. Complainant calls this practice "mousetrapping," and alleges that Respondent was responsible for it. (Footnote 1)
On January 2, 2001, Complainant's counsel sent a cease and desist letter to Respondents. Respondent Bensonoff replied by email on January 9, 2001, stating that he was in the process of "transferring" the Domain Name to a Russian company (stated by Respondent to be "not registered to do business in the U.S." (Footnote 2)) for $10,000, but agreeing to transfer the Domain Name to Complainant for $1000, "our initial expenses in securing and developing the domain." Complainant refused this offer and commenced this proceeding.
Subsequently to January 10, 2001, users going to Respondents' web site have been redirected to , a commercial web site at which domain name registration services are offered. (Footnote 3) There is no claim or evidence that www.XXX and are anything other than commercial web sites.
5. Parties' Contentions
Complainant accuses Respondents of "typosquatting," intentionally registering a domain name that is identical to its mark but for a simple typographical error (the second g at the beginning). Describing its marks as "famous," Complainant asserts that Respondents' registration and use of the Domain Name (a) are likely to cause confusion as to ownership or affiliation of the Domain Name and the activities promoted at Respondents' web sites, (b) tarnish Complainant's reputation and the goodwill associated with its marks, (c) damage Complainant's ability to attract or continue its profitable advertising and links to other well-known web sites, and (d) were intended to attract for commercial gain Complaint's customers or users of its search engine. Complainant asserts that Respondent Bensonoff's offer to sell the Domain Name to a third party or to Complainant constitutes bad faith registration and use of the Domain Name.
In its email message to Complainant's counsel, Respondent disputes neither any of counsel's assertions in her cease and desist letter nor any of the contentions described above
6. Discussion
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of
the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has a right;
(2) that the Respondent has no legitimate interests in respect to the Domain Name; and
(3) that the Domain Name has been registered and used in bad faith.
A Respondent's failure to respond to a complaint does not automatically result in a default judgment for Complainant. Complainant must still establish the elements described above, and the Panel will make findings in accordance with the evidence and base its decision upon those findings.
Identity. The Domain Name is clearly similar to Complainant's marks and trade name and likely to cause confusion among Complainant's users. So far as the Sole Panelist has been able to determine, slight misspellings have never been sufficient to distinguish a challenged domain name from an established mark. (Footnote 4)
Legitimate Interest. Nothing in the record suggests any legitimate interest of either Respondent in the Doman Name. Google is a fanciful word, (Footnote 5) and there is no suggestion that it is used by Respondents to identify their business.
Bad Faith. Although some of its allegations include dubious inferences, Complainant has shown several instances of bad faith. The Domain Name was registered well after Complainant's business became well known to Internet users; Respondents have attempted to sell the Domain Name to a third party and to Complainant, in each case for a price in excess of the registration costs for the Domain Name; the web site using the Domain Name was used for commercial purposes, and the similarity of the Domain Name to Complainant's marks is so striking that it is impossible to escape an inference that the Domain Name was chosen intentionally to attract Complainant's users. (Footnote 6) Any of these facts supports a finding of registration and use in bad faith. The Panel further finds that a minor spelling variant to a well-known mark, without any explanation, alone creates a prima facie inference of bad faith. There is no evidence in this case to overcome that inference.
7. Decision
For the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: February 27, 2001
Footnotes:
1. Complainant does not describe how technically the "mousetrapping" is accomplished.
2. Respondent Bensonoff made this latter observation in the context of suggesting that an immediate payment to Respondents would be simpler than pursuing litigation against a non-U.S. corporation.
3. Respondent Bensonoff did agree in the letter to remove any re-directions to pornographic sites, and apparently complied with this undertaking.
4. See e.g., VeriSign Inc. v. Onlinemalls, WIPO Case NO. D2000-1446 (VeriSign/veresign and verasign); America Onlin, Inc. v. Zuccarini, WIPO Case N. D2000-1495 (winamp/winnamp); The Toronto Dominion Bank v. Karpachev, WIPO Case No. 2000-1571 (tdwaterhouse/tdwatergouse and dwaterhouse); YAHOO! INC. v. Internet Entertainment Group, WIPO Case No. D2000-1595 (yahoo/yahomo).
5. Google may be a variant spelling of googol, a number equal to 10 to the one hundredth power. That term is in no way descriptive of Complainant�s business.
6. Even though Respondents did not technically divert Complainant�s customers, it did use the Domain Name to divert the many users of Complainant�s search engine � a far larger target audience and an audience of obvious and crucial commercial importance to Complainant. Any distinction between customers and users does not vitiate Respondents� intent to divert and concomitant bad faith.
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