WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Google Inc. v. Nestor Hugo Caceres Case No. D2009-1367 1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Nestor Hugo Caceres of Pigue, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2009. On October 15, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 19, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on November 24, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was founded in 1997 and operates the world's largest search engine. The Complainant is well-known and operates a website at “”. The Complainant has registered over 250 other domain names incorporating its registered GOOGLE mark. Among its registrations in other jurisdictions, the Complainant's mark was first registered in the United States of America in September 2004 on the principal register of the USPTO. That mark has a claimed first use in commerce in 1997, in relation to computer services. The Complainant also claims to have a mark registered in Argentina under numbers 1790610, 1838165, 2120342, and 2120347 (although the Complainant did not provide copies of the certificates of those registrations).
The Complainant's primary website generates revenue through on-line advertising. The products and services of the Complainant reach more than 150 countries, including the United States of America. Among others, the Complainant provides “Google map” services. Those services let people map out their localities with street names and landmarks through online maps.
Other information about the Complainant is detailed in past cases under the Policy, in which the Complainant was successful in having disputed domain names transferred to it. Those cases include e.g.: Google v. Abercrombie 1, NAF Case No. 0101579; Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Google Inc. v. Jeltes Consulting / N. Tea Pty Ltd.,WIPO Case No. D2008-0994; Google Inc. v. txtcorp,WIPO Case No. D2009-0453; Google Inc. v. Advertising services Saigon Vietnam,WIPO Case No. D2009-1157; Google Inc. v. Thilak Raj, Net Jobs,WIPO Case No. D2009-0033.
The disputed domain name was registered on November 19, 2008 (as indicated by the ‘creation date' in the WhoIs details confirmed by the Register). The Complainant provided evidence that, on October 5, 2009, the disputed domain name reverted to a website in Spanish dealing with “Google Maps of Argentina”. The website invited the placement of advertisements, although at that date no third party advertisements appeared on the Respondent's website.
On September 4, 2009, the Complainant sent a letter of demand (in Spanish) to the Respondent, and received no response. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE mark, since its mark is entirely incorporated in the disputed domain name and forms the distinctive element. The Respondent has only suffixed the common dictionary term “maps” and a geographic name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant to use its GOOGLE mark. There is no credible legitimate reason for the Respondent to have acquired the disputed domain name. The nature of the Respondent's use of the disputed domain name cannot constitute a legitimate interest. The adoption by the Respondent of the GOOGLE name was plainly designed to assist it in impersonating the Complainant and, as such, its use cannot constitute a bona fide offering.
The Complainant finally alleges that the disputed domain name was registered and has been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant claims that the Respondent's website substantially imitates a service offered by the Complainant. The Respondent is not authorized by the Complainant to use its mark. The Respondent's use of the domain name is not accidental and has clearly been made to derive unfair monetary advantage. The Complainant states that the Respondent's failure to respond to its letter of demand further demonstrates bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
The Complainant has been successful in a substantial number of cases under the Policy (see e.g. those referenced above) which have recognized its registered GOOGLE mark. The Panel considers that the disputed domain name is confusingly similar to that mark. The mark is incorporated entirely in the disputed domain name and that mark is well-known. The whole incorporation of a mark in a domain name has been previously recognized as a sufficient basis for a finding of confusing similarity under the Policy. (See e.g., Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096.) The disputed domain name merely adds the descriptive word “maps” and the geographic identifier “argentina” which together suggests an association with the Complainant's mapping services.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The consensus of previous decisions under the Policy is that a complainant establishes this element by making out a prima facie case against the Respondent. Here, the Complainant has made out such a case. As noted in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.: “Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” Here, the Respondent has failed to reply. There is otherwise no evidence in the case file which suggests that the Respondent may have a right or legitimate interest in the disputed domain name. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
A finding of bad faith may be made if the Respondent was aware of the Complainant and registered the disputed domain name to exploit the Complainant's mark. In the Panel's view, the circumstances of this case suggest that this is what the Respondent has done. The Complainant and its mark are well-known. The Respondent's website makes various references to the Complainant's mark and the mapping services which are offered by the Complainant. Indeed, there is little else on the Respondent's website which suggests a different association. The Respondent's website invites others to place advertisements on his website and it is reasonable to infer that the Respondent has done so with an intent to profit. As such, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the affiliation of its products or services. Under paragraph 4(b)(iv) of the Policy, such an intention establishes that the disputed domain name was registered and used in bad faith.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: December 8, 2009
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