The Complainant is Google Inc. of California, the United States of America, represented by Cooley LLP, United States of America (“the United States”).
The Respondent is Markus Weiler, Francotel Francophone Telecom of Mougins, France. 2. The Domain Name and Registrar
The disputed domain name is registered with OVH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 27, 2011, the Center transmitted by email to OVH a request for registrar verification in connection with the disputed domain name. On May 30, 2011, OVH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details. On June 3, 2011, the Center transmitted an email communication to the parties in both French and English regarding the language of the proceeding. On June 6, 2011, the Complainant requested that English be the language of the proceeding. On June 8, 2011, the Respondent requested that French be the language of the proceeding.
The Center has verified that the Complaint satisfies 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 proceeding commenced June 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response July 4, 2011. The Response was filed with the Center June 20, 2011.
The Complainant and the Respondent have both submitted supplemental filings on June 28, 2011.
The Center appointed Sebastian M.W. Hughes, William R. Towns and Uwa Ohiku as panelists in this matter on August 1, 2011. The Panel finds that it was properly constituted. Each member of 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.
Supplemental Filings
Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. This Panel declines to accept both parties’ supplemental filings since no compelling reason was advanced to justify their acceptance. 4. Factual Background A. Complainant
The Complainant is a company incorporated in the State of Delaware in the United States and the owner of over 100 registrations for the trade mark ADWORDS (the “Trade Mark”) worldwide, including a registration in the United States issued on December 16, 2003 and a registration in France issued on December 14, 2006. The Complainant is also the owner of the domain name containing the Trade Mark, registered on July 26, 1999. B. Respondent
The Respondent is a company incorporated in France.
The disputed domain name was registered on August 13, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made submissions as follows.
The Complainant is a world famous provider of Internet search engine, advertising, and web application services, founded in 1998. The Complainant’s Google search engine is the most used search engine on the Internet, receiving several hundred million queries each day through its various services. The Complainant’s Google search engine is used each month by more than 581 million users worldwide, including millions of users in the United States and France.
The most prominent of the Complainant’s well-known advertising services is its ADWORDS service. ADWORDS is a keyword advertising platform launched by the Complainant in 2000. The service allows advertisers to purchase a keyword that will trigger the display of advertisements when a consumer enters that keyword into the Complainant’s Google search engine.
The Complainant’s ADWORDS service also displays targeted advertisements within the Complainant’s applications, such as its Gmail service. The Complainant’s customers can also choose to use the ADWORDS service to have their advertisements displayed throughout the Complainant’s partner networks, for example AOL search and A.
In addition, the ADWORDS service is a mobile platform. Consumers who access and use the Complainant’s applications via their mobile phones or other mobile devices are likely to encounter targeted advertisements as a result of the Complainant’s ADWORDS service.
The majority of the Complainant’s revenue is generated through its ADWORDS service. In 2010, the Complainant’s advertising revenues totalled over USD 28 billion.
The Complainant has continuously used the Trade Mark in commerce in the United States, France, and internationally, since the launch of its ADWORDS service in 2000. The Trade Mark is inherently distinctive and a strong identifier of source for the Complainant’s services. The Trade Mark was coined by the Complainant when it launched the ADWORDS service. The Trade Mark has no dictionary definition and does not otherwise exist in the English language.
The Complainant has expended considerable effort and expense promoting the Trade Mark throughout the world. As a result of the Complainant’s worldwide use and extensive advertising and promotion of the Trade Mark, the regular publication of unsolicited stories in the media, the substantial revenue generated under the Trade Mark, the high degree of consumer recognition of the Trade Mark, and the strong and loyal base of customers utilising the Complainant’s ADWORDS service, the Trade Mark is famous and well-known.
The Respondent registered the disputed domain name more than ten years after the Complainant adopted the Trade Mark and seven years after the Complainant first registered the Trade Mark. The disputed domain name was resolved to a website promoting the Respondent’s mobile advertising services (the “Website”). The Website was prominently titled “ADWORDS® MOBILE ADS”, and included detailed information regarding the Respondent’s advertising services. The Website stated that users can use the Respondent’s ADWORDS® service to “create mobile ads and set matching keywords” and that those “mobile ads will be displayed on our partner mobile search engines, mobile directories and other mobile websites”.
The Respondent has been using the disputed domain name in an effort to offer services that overlap with those offered by the Complainant under the Trade Mark and to generate revenue by misleading consumers as to the source of its services. Consumers familiar with the Trade Mark are likely to visit the Website under the mistaken assumption that the site is operated by or affiliated with the Complainant.
The Complainant successfully opposed the Respondent’s application for registration of the trade mark ADWORDS in France in respect of certain services, and intends filing a cancellation action in respect of those services in respect of which the Respondent has recently obtained registration of the ADWORDS mark in France.
The Respondent has filed an application to register the trade mark ADWORDS with the United States Patent & Trademark Office, which the Complainant has opposed. The Respondent has also petitioned to cancel the Complainant’s EU registration for the Trade Mark, which the Complainant is contesting. The Respondent’s actions amount to a calculated and systematic campaign to hijack the Trade Mark, along with its accompanying reputation and goodwill, and to misappropriate the Complainant’s intellectual property for the Respondent’s own financial gain.
The disputed domain name is confusingly similar to the Trade Mark and the use of a hyphen in the disputed domain name does not serve to distinguish it from the Trade Mark.
The Respondent is not commonly known under the disputed domain name and does not have any rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
In registering the disputed domain name comprising the Complainant’s well-known Trade Mark, the Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website, which Website offers services overlapping with those provided by the Complainant under the Trade Mark. B. Respondent
The Respondent made submissions in the Response as follows.
The Respondent is the owner of the trade mark ADWORDS registered in France under number 3759889 (the “Respondent’s Mark”).
The Complainant’s registration of the Trade Mark in class 35 does not give the Complainant global protection in respect of the Trade Mark.
The services of the Complainant under the Trade Mark are different to those of the Respondent. The Complainant offers services in class 35 such as dissemination of advertising for others, whereas the Respondent offers telecommunication services, namely provision of online directories with the ability to include advertising words for free.
There is no similarity between the services offered under the Trade Mark and the services offered under the Respondent’s Mark, and the filing of the Complaint shows the incompetence of the Complainant’s trade mark attorneys, and their misunderstanding of the Nice Classifications in respect of trade mark services. The Respondent has rights or legitimate interests in respect of the disputed domain name, as the services offered by the Respondent are completely different, being telecommunication services in class 38.
The Trade Mark is used by the Complainant in bad faith and the Respondent requests the rejection of the Complaint. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is French. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay in respect of the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding on the ground the Respondent is familiar with the English language, as:
(1) The Complainant and the Respondent have corresponded in English;
(2) The disputed domain name consists of English words;
(3) The Website is entirely in the English language; and
(4) The English text on the Website is grammatically and syntactically correct.
The Respondent has objected to the use of English as the language of the proceeding and requested that French be the language of the proceeding, as the disputed domain name was registered in France.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Complainant has adduced evidence to suggest the Respondent is conversant and proficient in the English language. Furthermore, the Respondent has communicated with the Center by email in fluent English, and the Response was filed in English. In all the circumstances, the Panel finds, on the evidence, it is likely the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over ten years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of punctuation marks such as hyphens should be disregarded in determining the question of confusing similarity between the domain name and the mark.
Save for the use of a hyphen, the disputed domain name contains the Trade Mark in its entirety.
Whether or not the services provided by the Respondent are identical or similar to those in respect of which the Trade Mark has been registered is not relevant to the question of identity or confusing similarity under the Policy. The Panel would however note that, in the context of this proceeding, despite the Respondent’s submissions to the contrary, it appears the services offered by the Respondent on the Website are similar to those in respect of which the Trade Mark has been registered and used.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence in these Policy proceedings that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over ten years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The available evidence suggests the Website at the disputed domain name has been used by the Respondent to offer similar mobile phone platform keyword-based advertising services to those offered by the Complainant under the Trade Mark. The Panel finds the use of the Trade Mark in the disputed domain name in this manner without the authorisation of the Complainant does not give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent for purposes of the Policy.
The Panel would query whether the Respondent has acquired any legitimate trade mark rights under the Policy in respect of the disputed domain name. Its application for registration of the Respondent’s Mark in France was opposed by the Complainant1, and, although the Respondent’s Mark has recently proceeded to registration in France in respect of certain services, the Complainant has indicated that it intends filing a cancellation action in due course. The Respondent’s application for registration of the Respondent’s Mark in the United States has been opposed by the Complainant.
Although, at least at present, it appears the Respondent is the owner of a registration for the Respondent’s Mark in France, it is clear from the evidence that the Complainant’s current registrations for the Trade Mark, including its registration in France, predate the Respondent’s registration by several years. Further, the Complainant’s use of the Trade Mark worldwide, including in France, predates the Respondent’s registration of the disputed domain name and of the Respondent’s Mark by more than ten years.
In light of the above, the Panel finds the Respondent’s attempts to register the ADWORDS trade mark in France and in the United States in respect of the same or similar services to those in respect of which the Trade Mark has been used and registered by the Complainant does not give rise to rights or legitimate interests for the purpose of the Policy on the part of the Respondent in the disputed domain name. (and indeed may have been a pretext to mask bad faith with respect to the Policy. See e.g. NCAA v. Gregory Freedman,WIPO Case No. D2000-0841).
The Respondent has failed to show on the present record that the disputed domain name is used in connection with a bona fide offering of goods or services for purposes of the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name for purposes of the Policy.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name for purposes of the Policy.
The Panel finds that the Respondent has failed in these Policy proceedings to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In registering and using the disputed domain name the Respondent has clearly used the Trade Mark in order to attract Internet users to the Website. The Panel finds use of the Trade Mark in this manner in order to promote competing mobile phone application keyword advertising services is clear evidence of bad faith.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following the filing of the Complaint, the Website has been taken down by the Respondent. The disputed domain name is currently resolved to a basic website inviting users to “Place some Ad with some Words here ! its (sic) Free !” (the “Current Website”). The Current Website also has the wording “Copyright © 2010-2011 AdWords® Francotel don't be the devil” at the bottom of the web page. At first glance it appears to be a pay per click website offering links to third party websites, although on further investigation it seems none of the links on the site are active.
Given the Respondent’s previous use of the disputed domain name in respect of the Website which offered competing services to those provided by the Complainant under the Trade Mark, the Panel finds the Respondent’s conduct in taking down the Website and setting up and using the Current Website amounts to nothing more than a thinly veiled attempt to disguise its previous use of the disputed domain name. In all the circumstances, the Panel finds such conduct amounts to further evidence of bad faith on the part of the Respondent for purposes of the Policy.
The Panel would further note, for the record, the Respondent’s allegation that the Trade Mark has been used by the Complainant in bad faith is completely without merit.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian M.W. Hughes
Presiding Panelist
William R. Towns
Panelist
Uwa Ohiku
Panelist
Dated: August 11, 2011
1 The Complainant’s opposition was partially successful, in respect of only certain of the services claimed by the Respondent.
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