WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Google Inc. v. Tran Anh Huy Case No. D2009-1542 1. The Parties
The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is Tran Anh Huy of Ha Noi, The Socialist Republic of Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2009. On November 17, 2009, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On November 18, 2009, Dynadot, LLC 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 November 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 14, 2009.
The Center appointed Cherise M .Valles as the sole panelist in this matter on December 16, 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, Google Inc., is widely recognised as one of the world's largest search engines. Its primary website was registered on September 15, 1997. Nielsen Netratings lists the Complainant's website “” as the number one search engine in many developing and developed countries. The Complainant's Google Network, which includes all of its sites, reaches more than 80 percent of Internet users in the world.
The Complainant's name and mark GOOGLE was coined and adopted in 1997 by the company's founders, Larry Page and Sergey Brin. The Complainant has obtained trademark registrations for its mark GOOGLE around the world. In India, the Complainant's mark GOOGLE has been registered under no. 845041 in class 09 since March 12, 1999.
The disputed domain name is . This domain name was registered on November 7, 2008. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the registered owner of the GOOGLE mark. A copy of the Complainant's trade mark registration certificate in India was provided in Annex 5 to the Complaint. A report showing the worldwide registration and application of the mark GOOGLE and copies of certain registration certificates were provided in Annex 6. The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademark in the light of the fact that it incorporates this trademark in its entirety. The addition of descriptive or non-distinctive terms does not diminish the likelihood of confusion. Moreover, the addition of the letters “quangcao” does not make any significant difference as that term means “advertising”, with the result that the disputed domain name means “advertising GOOGLE.” As Google has a branding policy in which it uses its primary mark with various descriptive words or phrases, it is likely that users seeing the disputed domain name could believe that it was an authorised Google site.
- The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant states that the GOOGLE mark is so well-known around the world that there is no credible legitimate reason for the Respondent to have registered that domain name. The Complainant submits that the Respondent's purpose in registering the disputed domain name was to use the notoriety of the GOOGLE mark to generate web traffic and to confuse Internet users. The Complainant has the exclusive rights to the GOOGLE trademarks and has not licensed or otherwise permitted the Respondent to apply for or use the disputed domain name. The Respondent is not commonly known by a name or nickname relating to the GOOGLE mark. The Respondent's name is Tran Anh Huy.
- The domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on November 7, 2008, the Respondent undoubtedly had knowledge of the Complainant's famous GOOGLE mark. Given the widespread knowledge of the GOOGLE mark, it is extremely unlikely that the Respondent created the disputed domain name independently. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating the impression that it is an authorised advertising site for the Complainant's services. Furthermore, the fact that the Respondent has refused to comply with demands from Google regarding the transfer of the domain name indicates that the registration of the disputed domain name was in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent was contacted by the Complainant on October 14, 2009 but refused to provide any explanation for the change in the registrant's name from that of a previous registrant to Tran Anh Huy, and refused to cooperate with the Complainant regarding settlement. The Respondent continues to maintain the domain name registration although the site is currently not operational. 6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the domain name; and,
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent, having failed to respond in these proceedings, is in default and the panel shall draw such appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark. It is well-established that the Complainant has registered the mark GOOGLE in many jurisdictions around the world. The disputed domain name is confusingly similar to the Complainant's mark as it entirely incorporates the mark. The addition of the term “quangcao” does not diminish that confusion as that term means “advertising” in Vietnamese, which then translates to “advertising GOOGLE”. As a result, Internet users may be misled into believing that the disputed domain name was an authorised Google website. A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another's mark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interest in the disputed domain name, and the Panel draws adverse inferences from this failure.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's famous GOOGLE mark. The Complainant, who has registered the mark GOOGLE in many jurisdictions around the world, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the term “google” in the disputed domain name.
There is no credible or legitimate reason for the Respondent to have chosen to acquire the disputed domain name. The evidence suggests that the Respondent obtained the disputed domain name only because it is similar to the Complainant's well-known mark, and due to user confusion, may intend to generate traffic due to same.
The Respondent is not an authorised sales or service agent of the Complainant. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited,WIPO Case No. D2006-1131. The Panel finds that, in these circumstances, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. C. Registered and Used in Bad Faith
The fame and unique qualities of the GOOGLE mark make it extremely unlikely that the disputed domain name was created for independent and impartial reasons.
The Panel finds that the Respondent, in all probability, had intended to use the Complainant's mark when registering the disputed domain name in order to direct traffic to a website that offers similar services to those that are offered by Google itself. In the light of the widespread knowledge of the Google mark around the world, it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021. 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 disputed domain name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: December 20, 2009
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