WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Google Inc. v. Ajan, Ozel Ajan (269186) Case No. D2009-1724 1. The Parties
The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates of India.
The Respondent is Ajan, Ozel Ajan (269186) of Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Reg2C.com Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2009. On December 16, 2009, the Center transmitted by email to Reg2C.com Inc. a request for registrar verification in connection with the disputed domain name. The registrar Reg2C.com Inc. did not transmit to the Center its verification response. The disputed domain was set to expire on December 18, 2009. The Center sent an email communication to the registrar on December 28, 2009 providing the confirmation that the disputed domain name will be placed in Registrar LOCK status. The registrar Reg2C.com Inc. did not reply. The Center based the proceedings on the available WhoIs information noting that the disputed domain name was under redemption period. 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 January 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2010.
The Center appointed Adam Samuel as the sole panelist in this matter on January 29, 2010. 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 is world renowned provider of Internet search services.
The Complainant is the owner of the United States of America trademark registrations No. 2884502 registered on September 14, 2004 and 3140793 on September 12, 2006 and Afghanistan trademark registration 7586 registered on June 18, 2006 both for the name GOOGLE. It owns registered trademarks for the same name in a number of other countries. The disputed domain name was registered on December 18, 2008. 5. Parties' Contentions A. Complainant
Here are the Complainant's contentions with which the Panel may or may not agree.
The GOOGLE mark has been widely promoted by the Complainant among members of the public since 1997. The Complainant owns numerous United States and other country registrations for the mark including two in Afghanistan, the Respondent's home country.
The disputed domain name involves adding the number “74” to the Complainant's trademark. The number lacks inherent distinctiveness leaving the Complainant's trademark highlighted. Numbers have a low level of distinctiveness. A web viewer would conclude that the Respondent's domain name is referring to the 74th category of the Complainant's domain names and that it was part of the suite of domain names of that genre or group. Given the Complainant's branding policy whereby it typically uses its house mark GOOGLE with a descriptive word or phrase, users seeing the disputed domain name are even more likely to believe that it originates with the Complainant.
There is no credible legitimate reason for the Respondent to have chosen to register the disputed domain name. GOOGLE is not a natural word or common name. It is not a common or natural descriptor for the use being made of the disputed domain name. The Respondent's purpose in selecting the disputed domain name was to use the fame of the Complainant's mark to generate web-traffic and confuse Internet users visiting the Respondent's site when looking for the Complainant and its famous suite of services.
The Respondent is not commonly known by the name or nickname of the disputed domain name or any name containing the Complainant's GOOGLE mark. The Complainant has not authorised or licensed the Respondent to use any of its trademarks.
The fame and unique qualities of the GOOGLE mark make it extremely unlikely that the Respondent created the disputed domain name independently. The Respondent's current use of the disputed domain name to resolve to a website that offers services that are competitive with those offered by the Complainant constitutes bad faith use and registration. The Respondent refers to the Complainant's products on its website. In doing so, the Respondent has intentionally attempted to attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website.
The website hosted by the disputed domain has in the past contained copied features of the Complainant's GOOGLE mark and logo. The website made use of the Complainant's Custom Search Engine.
On January 12 and June 22, 2009, the Complainant wrote to the Respondent asking the Respondent to transfer the domain name to it. The Respondent did not reply. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trademark, the number “74” and the the necessary addition of the suffix “.com”. The addition of a meaningless number after a trademark, particularly one as well known as the Complainant's does not prevent the disputed domain name from being confusingly similar to the Complainant's mark.
The Panel took the same view in Pfizer Inc v. Michel Mertz,WIPO Case No. D2005-0150 where it said:
“The disputed Domain Name contains the whole of the Complainant's registered trademark, VIAGRA. It differs from the registered trademark only in:
(a) the addition of a hyphen;
(b) the addition of the numbers “123”; and
(c) the addition of the .com gTLD.
None of these integers alone would preclude the disputed Domain Name from being confusingly similar [.….]
Considering the disputed Domain Name as a whole, the combined effect of the differences does not alter the conclusion that it is confusingly similar to the Complainant's registered trademarks. The distinctive component of the disputed Domain Name is the Complainant's registered trademark, VIAGRA, the other elements of the disputed Domain Name do not add anything distinctive to that other than, possibly, to differentiate the website from (at least) 122 other “Viagra” websites. The essential component, the memorable part, is the term VIAGRA.
Accordingly, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant's registered trademark rights.”
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent is not called “Google” or “74” or anything similar and does not appear to trade under these or any related names. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The domain name was registered after the trademark was registered in USA and even Afghanistan. The worldwide renown of the Complainant and its mark and the way in which the Respondent has referred to it on its website in the past makes it clear that the Respondent was well aware of the Complainant. This demonstrates that the Respondent was aware of the Complainant's trademark rights when he registered the disputed domain name.
In the absence of any response to the Complaint, the only explanation for the Respondent's registration of the disputed domain name seems to be the Respondent's intention to either disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or perhaps also persuade the Complainant to buy the domain name from it for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii) and (iii) of the Policy.
In the circumstances, it is unnecessary to deal with the Complainant's other allegations. For all the above reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
It has come to the Center's attention that the Respondent may not currently have control over the domain name as the Whois listed information indicates that the listed registrant of record is “DNS Admin, Google Inc., being the Complainant, and that the disputed domain name may have passed to a new registrar, being Markmonitor Inc. The Policy only provides for two remedies where the Complaint is successful, transfer or cancellation of the disputed domain name. It must be assumed that the former type of order is conditional on the relevant Registrar being able to make this transfer and the decision in this case is made on that assumption.
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.
Adam Samuel
Sole Panelist
Dated: February 10, 2010
Full & Egal Universal Law Academy