UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

National Arbitration Forum

National Arbitration Forum
DECISION

Google Inc. v. 207 Media


Claim Number: FA0911001293500


PARTIES

Complainant is Google Inc. ("Complainant"), represented by Meredith M. Pavia, California, USA. Respondent is 207 Media ("Respondent"), represented by Zak Muscovtich, of The Muscovtich Law Firm, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <groovle.com>, registered with Godaddy.com, Inc.


PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. Karl V. Fink (Ret.), Hon. Robert T. Pfeuffer (Ret.) and Mr. David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2009.

On November 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <groovle.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@groovle.com by e-mail.

A timely Response was received and determined to be complete on December 1, 2009.

A timely additional submission was received from Complainant on December 7, 2009.

On December 10, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), Hon. Robert Pfeuffer (Ret.) and Mr. David Sorkin as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Google is a Delaware corporation located in Mountain View, California.

The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, Google has become one of the largest, most highly recognized, and widely used Internet search services in the world.

The GOOGLE search engine maintains one of the largest collections of searchable documents in the world.

Google's website is one of the most popular destinations on the Internet.

Google also offers a wide range of other products besides search.

The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google. Due to widespread and substantial international use, this mark and name have become famous.

Google has used the GOOGLE Mark continuously since well prior to May 13, 2003, the registration date for the Domain Name. Google owns U.S. registrations issued prior to, or resulting from applications filed prior to, May 13, 2003.

Google owns numerous United States and foreign registrations for the GOOGLE Mark.

The Domain Name currently resolves to a website that offers services that are connected to Complainant's custom search engine.

Google has exchanged communications with Registrant in an effort to have the Domain Name transferred from Registrant to Google Registrant responded, indicating he had removed the GOOGLE trademark and logo from the site and added a disclaimer.

The Domain Name is "nearly identical or confusingly similar" to Complainant's GOOGLE Mark. Minor alterations or misspellings do not eliminate the confusingly similar aspects of the Domain Name and Complainant's mark. Here, the Domain Name is only two letters different from Complainant's GOOGLE mark; therefore, the Domain Name is confusingly similar to Complainant's mark.

Registrant is using the Domain Name in connection with Complainant's search engine services and is using a website layout that mimics Google's search homepage.

Registrant is clearly using Complainant's famous GOOGLE Mark to attract internet users to its own website for commercial gain.

The Domain Name displayed clear references to Complainant through the use of Complainant's GOOGLE mark and logo.

The layout of the search box and other items on Registrant's customized homepages is highly similar to the layout of the Google search homepage.

As a user of Complainant's custom search engine, Registrant agreed to adhere to the Google Custom Search Branding Policy, which states that users "may not display Google Brand Features in any manner that implies sponsorship of endorsement by Google, except for your involvement in the Custom Search program."

Registrant has no rights or legitimate interests in the Domain Name.

The fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the Registrant created the Domain Name independently. Registrant was not only aware of Complainant's rights in the GOOGLE mark, but clearly selected the Domain Name because of the confusingly similarity to the GOOGLE mark. This is evidenced by Registrant's prior use of the GOOGLE mark and logo, and slogans stating "Your Groovy Google Custom Search Homepage" and "Groovle - Your GROOVY Google Homepage," as well as Registrant's use of a layout that is highly similar to Google's search homepage.

Respondent's current use of the Domain Name to resolve to a website that offers services that are connected to Google constitutes bad faith use and registration.

Registrant is violating Google's Custom Search Branding Policy by use of the Domain Name. Such behavior is further evidence of bad faith use and registration.

B. Respondent

The Complaint must be dismissed because it is not a dispute within the jurisdiction of the UDRP. The Complainant has not met the three-part test pursuant to Paragraph 4(a) of the UDRP.

The Complainant has a well known trademark for GOOGLE in connection with its search engine services and related products and services.

Respondent is a federally incorporated Canadian Corporation, with a registered office in Oakville, Ontario. It is owned and directed by young entrepreneurs. 207 Media is primarily a web development and marketing firm.

To-date, the Complainant has brought forty-nine (49) UDRP Complaints to the NAF and sixteen (16) Complaints to WIPO over its GOOGLE mark, for a total of sixty-five (65) separate complaints concerning hundreds of domain names, and it has been successful in every single one (the "Google Cases") - except for one case - froogles.com, that case is similar to the instant case.

The Domain Name, Groovle.com was registered by the Respondent on or about June 6, 2007. The Domain Name however, was first created on or about May 13, 2003. The Respondent commenced immediate use of the Domain Name after registering it on or about June 7, 2007. Since the launch of Groovle.com, the Respondent has continually used the Domain Name in association with the Groovle.com web site.

The Complainant has implemented "Guidelines for Implementing Google Custom Search". According to the Guidelines, while developers must use Google's trademarks and brand to identify their association and affiliation with the Google search service, developers should not, imply any "other" sponsorship or endorsement by Google.

The Complainant and the Respondent jointly provide advertising through Groovle.com. Respondent agreed to only use advertisements provided by the Complainant on Groovle.com.

Google contracts with developers such as the Respondent to distribute Google Pay Per Click ("PPC") advertisements via customized start page services. Users who use the Respondent's service will see advertisements provided by Google, and Google will pay a small percentage of these PPC advertising revenues to developers, such as the Respondent. Since the Respondent has contracted with the Complainant, the Respondent has consistently been paid by Google for its efforts in distributing Google PPC advertisements via the Groovle.com service.

Respondent has also made various changes to the appearance of the Web Site, in order to further differentiate itself from the Complainant. There is little or no likelihood of any confusion between Groovle.com and the Complainant. The Complainant has not provided any evidence whatsoever of any actual confusion.

There is no misspelling of GOOGLE involved. The Disputed Domain Name contains an important "R" and important "V" that serve to distinguish the sound, appearance, meaning, and connotation of GROOVLE from GOOGLE. The addition of the "R" and the "V" clearly make the predominant word and meaning "GROOVE" or "GROOVY" rather than GOOGLE.

Respondent has a legitimate interest in the Domain Name. Respondent has carried on business under the Groovle.com web site and domain name for over 2 ½ years, unmolested and undisturbed by the Complainant, who was a joint venture of sorts with the Respondent.

Before notice of the dispute, Respondent used the Domain Name in connection with an offering of goods and services that was so bona fide that the Complainant itself pays for it.

The question of trademark infringement is outside the scope of the UDRP. The UDRP is concerned with cybersquatting only, and this is not a cybersquatting case. Likewise, the question of whether or not the Respondent breached the Contract and Guidelines, is an argument outside of the scope of the UDRP.

None of the four enumerated grounds in Paragraph 4(b) of the UDRP for a finding of bad faith exist in this case.

C. Additional Submissions

Complainant's Additional Submission:

Complainant considers the "froogles.com case" (Googe Inc. v. Richard Wolfe, FA0275419 (Nat. Arb. Forum July 18, 2004)) to have been wrongly decided.

Assuming the <froogles.com> case was correctly decided, the situation presented here is distinguishable. In this case, the Domain Name begins with the letter "G" as does Complainant's mark. The identical, most notable letter creates a stronger similarity to Complainant's GOOGLE mark than "froogles."

As admitted by Registrant, the Domain Name was derived from the GOOGLE mark.

Bad faith registration and use is manifest here: Registrant selected and registered the Domain Name because of its similarity to GOOGLE and is using it for services that compete with Google.

The totality of the circumstances, including the content of Registrant's website, may be considered in assessing whether the GOOGLE mark and the Domain Name are confusingly similar.

Proof of actual confusion is not required to show a domain name is confusingly similar to a Complainant's mark.

The fame and uniqueness of the GOOGLE mark can and should be taken into account both in assessing whether the Domain Name is confusingly similar to Complainant's mark and in evaluating Registrant's motivation in registering and using the Domain Name.

The Response does not accurately explain the nature of Registrant's "contract" with Complainant. Registrant's participation in Google's Custom Search Engine ("CSE") and Google's AdSense programs is not the result of a negotiated deal. Registrant signed up for CSE via online clickwrap. Google did not review Registrant's site before it launched nor did Google ever agree that Registrant's site did not violate Google's terms of use.

Encouraging developers to select Google's custom search services is not the same as encouraging (or permitting) developers to register domain names that are confusingly similar to Complainant's trademarks.

The length of time Registrant has held the Domain Name is not relevant.

The GOOGLE brand is incredibly popular and Google works hard to identify and remedy abuses. Nonetheless, it is impossible for Google to immediately identify all abuses, even those committed by people using Google's services.

FINDINGS

For the reasons set forth below, the Panel finds the relief requested should be denied.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)  the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.



Identical and/or Confusingly Similar

Respondent contends that its <groovle.com> domain name is sufficiently differentiated from Complainant's GOOGLE mark. Respondent argues that the disputed domain name is not a misspelling of Complainant's mark; Respondent asserts that the disputed domain name contains the significant letters "r" and "v" which serve to distinguish the sound, appearance, meaning, and connotation of "groovle" from Complainant's GOOGLE mark. Furthermore, Respondent contends that its alterations clearly transform the predominant word of the <groovle.com> domain name to "groove" or "groovy," not GOOGLE. Respondent contends that these alterations are sufficient to distinguish its <groovle.com> domain name from Complainant's GOOGLE mark. The Panel agrees and finds that Respondent's <groovle.com> domain name is not confusingly similar to Complainant's GOOGLE mark under Policy ¶ 4(a)(i). See Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) ("The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.").

Complainant has not proven this element.


Rights or Legitimate Interests and Registration and Use in Bad Faith

Since the Panel found that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int'l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <groovle.com> domain name REMAIN with Respondent.

Signed Karl V. Fink

Honorable Karl V. Fink (Ret.), Chair

Hon. Robert T. Pfeuffer (Ret.), Panelist

Mr. David E. Sorkin, Panelist

Dated: December 24, 2009

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