The Complainant is Google LLC, United States of America, represented by Rouse and Co. International, United Arab Emirates.
The Respondents are Mitra Haman, Canada, and Samaneh Latifi, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 10, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent Samaneh Latifi sent informal email communications to the Center on July 10, 2019, and July 11, 2019. On July 11, 2019, the Center sent a possible settlement email to the Parties. The Center received an email communication from “[…]@”, which appears to be the Respondents’ technical contact, on July 14, 2019 stating that the owner of the disputed domain name is Samaneh Latifi and that Mitra Haman is a technical person who helps Samaneh Latifi on “Domain Management”. On July 15, 2019, the Complainant requested the suspension of the proceedings for settlement discussion. On August 14, 2019, the Complainant requested the reinstitution of the proceedings. The Respondents did not submit a formal response. Accordingly, the Center notified the Parties the reinstitution of the proceedings and the commencement of panel appointment process on August 14, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 2, 2019. 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 the owner, amongst others, of the following trademark registrations (Annexes 12 and 16 to the Complaint):
- Iranian Trademark registration No. 124620 for GOOGLE registered on September 28, 2005, to cover products and services in classes 09 and 42; and
- Iranian Trademark registration No. 124622 for GOOGLE (in farsi) registered on October 1, 2005, to cover products and services in classes 09 and 42.
The disputed domain name was registered on February 16, 2019. Currently the disputed domain name resolves an active webpage displaying the Complainant’s trademark and is described by the Respondents as a “directory website”, featuring advertisements for services across Iran. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have become, since 1997 when the GOOGLE trademark was created, one of the most highly recognized and widely used Internet search services in the world, being ranked consecutively as one of the top five Best Global Brands, as well as one of the most valuable brands in the world. In addition to its renowned search engine services, the Complainant states that it renders a broad array of technological and mobile products and services.
The Complainant further asserts that the recently registered disputed domain name characterizes a confusingly mistyping of the Complainant’s trademark indicating the Respondents’ intent to pass them off as the Complainant and to mislead the general public into believing that the Complainant sponsors or is associated with the Respondents’ website and offering of classified advertisements in several cities across Iran.
According to the Complainant, the Respondents have no rights or legitimate interests in the disputed domain name given that:
(i) the Complainant’s widespread and prominent use of its GOOGLE mark indicates that the Respondents deliberately have chosen the disputed domain name seeking to create an association with the Complainant and to trade off the Complainant’s goodwill;
(ii) there is no evidence that the Respondents have any rights or legitimate interests in the disputed domain name;
(iii) the Complainant has not authorized the Respondents to register or use the disputed domain name, nor are they affiliated with, associated with, or otherwise endorsed by the Complainant; not being the Respondents licensees or otherwise having they been permitted to make any use of the GOOGLE trademarks;
(iv) the Respondents are not commonly known by the disputed domain name or by any other name incorporating the Google trademark;
(v) the Respondents are not making a bona fide offering of goods or services under the Policy or a legitimate noncommercial or fair use of the disputed domain name since the disputed domain name is being used in connection with a classified website, offering advertisements for services in several cities across Iran, misleadingly generating income or revenues from click-through advertisements, and competing with the Complainant’s services, and
(vi) the website hosted at the disputed domain name is using the Complainant’s trademark as well as prominently features graphics from the Complainant’s Google Maps service showing the map of Teheran.
Lastly, the Complainant asserts that the bad faith of the Respondents is evident given that the Respondents are intentionally misleading and attempting to redirect Internet users to their advantage. Furthermore, the Respondents’ bad faith also arises from the fact that Samaneh Latifi was named the Respondent in a past .irDRP decision relating to the domain name, having the decision in that case been rendered on February 15, 2019, and the disputed domain name registered on the following day. Moreover, the transfer of the disputed domain name to Mitra Haman was made by Samaneh Latifi but indicates that the disputed domain name is under his or common control given that the same email address has been indicated for both “firstnode@[...]”. B. Respondents
The Respondents did not formally reply to the Complainant’s contentions.
On July 10, 2019 and July 11, 2019 email messages from the email accounts “firstnode@[...]” and “sin2kht@[...]” but signed by Samaneh Latifi were sent to the Center indicating that the disputed domain name is being used as a directory website not connected to the Complainant, also stating that “we just use it because the meaning of google(googling) is search for information”, as well as asking for time to redirect to a new domain name and undertaking not to use it anymore. 6. Discussion and Findings 6.1. Preliminary Matter: Respondents’ identity
The Center received confirmation from the Registrar that the disputed domain name is presently held under the name of Mitra Haman (“firstnode@[...]”). The evidence and subsequent correspondence sent to the Center from the email address “firstnode@[...]” indicate that Samaneh Latifi is the individual in actual control of the disputed domain name. In the circumstances this Panel will consider both Mitra Haman and Samaneh Latifi as the Respondents. 6.2. Substantive Matters A. Identical or Confusingly Similar
The Complainant has established rights in the GOOGLE trademark, duly registered around the world and in the Islamic Republic of Iran.
The disputed domain name, , characterizes a common mistyping of the Complainant’s trademark, with the addition of the geographical term “Iran” not preventing the confusing similarity sufficient to distinguish the disputed domain name and the Complainant’s trademark.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents, in their informal messages to the Center confess that they are also using the disputed domain name to offer competing services to the Complainant’s and appear to justify their choice of the disputed domain name “because the meaning of google(googling) is search for information”.
Such feeble excuse, together with the reproduction of the Complainant’s trademark and graphics from the Complainant’s Google Maps service showing the map of Teheran in the webpage that resolves from the disputed domain name cannot be understood as a bona fide offering of goods or services, but quite to the contrary, an evident case of undue use with a clear intent for commercial gain by misleadingly diverting the Complainant’s consumers for their website.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a website that offers competing services depicting the Complainant’s trademark and graphics characterizes the Respondents’ intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus capitalizing on the GOOGLE trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, the evidence indicates that the Respondent Samaneh Latifi has already been found in bad faith in relation to the domain name , being his conduct even more reprehensible and inexcusable. The Complainant enjoys exclusive rights over the GOOGLE trademark which is not a descriptive term. Quite to the contrary: in view of the widespread notoriety of the Complainant and its trademark it enjoys protection against registrants such as the Respondent.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. 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 name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: September 16, 2019
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