The Complainant is Google Inc. of Mountain View, California, United States of America (“USA”) represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany.
The Respondent is Filarco Service Ditta Individuale of Cosenza, Italy / Contact Privacy Inc. Customer 0139030321 of Toronto, Canada. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2015. On February 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Filarco Service Ditta Individuale is listed as the registrant for the disputed domain names and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 2, 2015.
The Center verified that the Complaint together with the amendment to 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 March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Respondent only sent an email to the Center stating that he does not speak English on March 9, 2015. The Center sent a courtesy translation into Italian of the notification of the Complaint on March 9, 2015. However, the Respondent did not reply to the Complainant’s contentions. Accordingly, the Center notified the Commencement of the Panel Appointment Process on March 30, 2015.
The Center appointed Mr. Kiyoshi Tsuru as the sole panelist in this matter on April 20, 2015. 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 a company which offers international Internet search services through its domain name and other related domain names.
The Complainant offers software, hardware, and specialized search engine products as well as other Internet related services under the GOOGLE trademark.
The Complainant provides directions, interactive maps, and satellite/aerial imagery of many countries and searches by keyword (displaying the geographical location of the searched item) through its Google Maps service.
The Complainant owns the following trademark registrations, among others: Registration No. Trademark Country Class Registration Date
1104306
European Community
09, 35, 38 and 42.
March 12, 1999
4316642
European Community
16, 25 and 35.
March 29, 2005
10081073
GOOGLE (stylized)
European Community
09, 35, 36 and 42
January 20, 2011
The disputed domain name was registered on November 27, 2014.
The disputed domain name was registered on December 18, 2014. 5. Parties’ Contentions A. Complainant
The Complainant argues the following: A.1. Identical or Confusingly Similar
That it is the rightful owner of the GOOGLE trademark on a worldwide basis through numerous trademark registrations.
That the disputed domain names fully incorporate the GOOGLE trademark, and that the addition of the term “mapsforyou” only increases the risk of confusion due to the fact that said term makes reference to the Google Maps service.
That the addition of purely descriptive terms does not impede the disputed domain names from being confusingly similar to the GOOGLE trademarks. A.2. Rights or Legitimate Interests
That the Complainant has not authorized the Respondent to use its GOOGLE trademark.
That the fact that the GOOGLE trademark is featured on the web sites to which the disputed domain names resolve, creates an incorrect impression that the services provided by means of said sites are related to, or authorized by the Complainant.
That the abovementioned websites do not accurately disclose that the Respondent does not have any relationship with the Complainant, and thus that the services offered by means of said sites cannot be made in good faith.
That the Respondent is actively creating the impression that he is affiliated with the Complainant.
That this false impression is fostered by the emails, which the Respondent has sent to interested users, stating that he is a merchandising consultant for Google Italia, which (from the Complainant’s perspective) is a fraudulent behavior towards Internet users.
That the Respondent is not (and has not been) commonly known by the disputed domain names.
That the Respondent’s intention is to misleadingly divert customers by trying to create an impression of affiliation between the Respondent and the Complainant’s services. A.3. Registered and Used in Bad Faith
That the Respondent is actively using the Complainant’s trademarks and is making reference to the Complainant’s services, which shows that the Respondent has known of the GOOGLE trademarks.
That the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the trademarks of the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of the services provided by the Respondent by means of the web sites to which the disputed domain names resolve. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As a preliminary matter, with reference to the Respondent’s March 9, 2015 email to the Center, the Panel finds that the language of the proceeding is English, as this is the language of the Registration Agreements for the disputed domain names. Rules, paragraph 11(a).
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant is the owner of a plurality of trademark registrations for GOOGLE.
The disputed domain names and are confusingly similar to the Complainant’s GOOGLE trademarks because said domain names entirely incorporate the Complainant’s marks.
The Complainant argues that the term “mapsforyou”, which has been incorporated to the disputed domain names by the Respondent, increases the confusing similarity between said disputed domain names and the Complainant’s trademark GOOGLE, because users and consumers are likely to relate the disputed domain names and precisely with the localization services that the Complainant provides.
It is clear that the trademark GOOGLE constitutes the distinctive element of the disputed domain names. The addition of generic terms such as “maps”, “for” and “you” has little effect on determining the existence of confusing similarity between the disputed domain names and the GOOGLE trademarks, and it does not prevent the likelihood of confusion between the disputed domain names, and the Complainant’s trademark (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Moreover, the addition of the generic Top-Level Domains (gTLDs) “.com” and “.info” is immaterial when conducting the confusing similarity test, because said gTLDs have no legal significance and do not confer have any distinctiveness to the disputed domain names (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark GOOGLE.
The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where the Respondent may have rights or legitimate interests in the disputed domain names:
(i) Before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as individual, business, or other organization) has been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has argued that it has not granted any license or authorization to the Respondent to register or use the GOOGLE trademarks in any manner. This assertion has not been rebutted by the Respondent, and thus the record holds no evidence of any rights or legitimate interests on the side of the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent has not submitted any evidence showing an actual bona fide use, or preparations to use the disputed domain names with a bona fide offering of services, nor has the Respondent demonstrated that it has been commonly known as and/or .
The Respondent has not proven that it is making a legitimate noncommercial or fair use of the disputed domain names. Moreover the Respondent is making a commercial use of the disputed domain names by offering localization services (similar to those provided by the Complainant under its Google Maps services) for a fee of EUR 150.
The Respondent has not demonstrated that it has any rights in the GOOGLE trademarks.
On the other hand, the Complainant has shown that it is the rightful owner of several GOOGLE trademarks registered worldwide, including in Italy, which is where the Respondent declared to have his domicile.
From the evidence submitted by the Complainant, it can be deduced that the GOOGLE trademark was registered in the European Community (which includes Italy), years before the disputed domain names were registered.
The evidence on the record shows that the Respondent is causing the disputed domain names to resolve to a web site featuring services bearing the GOOGLE trademark, therefore attracting and diverting Internet users away from the Complainant’s service for commercial gain. This conduct cannot be considered to be a fair or legitimate use of the disputed domain names (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
The Respondent is not entitled to register a domain name incorporating the company name and trademarks of the Complainant, because this conduct could cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondent has any rights to, or legitimate interests in the disputed domain names. Mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
Therefore, since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, to provide a service that competes with the Complainant’s localization services, and taking into account that the web sites to which the disputed domain names resolve feature the Complainant’s GOOGLE trademarks without authorization, the Respondent does not have any rights in, or legitimate interests to the disputed domain names.
The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The web sites to which the disputed domain names resolve comprise content which overall composition and selection of colors causes a risk of confusion among consumers, because said sites could be mistaken by Internet users and consumers, as being related to, and/or authorized by the Complainant. This content reveals that the Respondent has known about the Complainant, and its trademark GOOGLE. The conduct of the Respondent constitutes a risk of deception and confusion among consumers.
Since the web sites to which the disputed domains resolve offer services that are similar to those marketed and provided by the Complainant, and taking into account fact that the Respondent is providing said services under a EUR 150 fee, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to such websites, creating a likelihood of confusion with the Complainant’s GOOGLE trademarks (see e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Owens Corning v. NA,WIPO Case No. D2007-1143).
The fact that the web sites to which the disputed domain names resolve, give the impression of being “official websites” of the Complainant or at least sites that are endorsed by, or affiliated to the Complainant, and the fact that the Respondent is charging a fee for the services rendered by means of said sites, show that the Respondent (by registering and using the disputed domain names) has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute, with the purpose of attracting Internet users to his web sites for commercial gain (see Produits Berger v. Romana Go,WIPO Case No. DPH2005-0001).
Therefore, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.
The third element of the Policy has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: April 29, 2015
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