Google Inc. v. GOOGLESERVICES
Claim Number: FA1105001391118
Complainant is Google Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West, LLP, California, USA. Respondent is GOOGLESERVICES (“Respondent”), England.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleservices.com>, registered with Tucows, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 27, 2011.
On May 31, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the disputed domain name <googleservices.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@googleservices.com. Also on May 31, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 20, 2011.
On June 22,2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On June 24, 2011, Complainant filed a timely Additional Submission
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant 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, the name Google has become one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant’s primary website is located at www.google.com.
Currently, Complainant’s GOOGLE search engine maintains one of the largest collections of searchable documents in the world. Complainant’s Google websites have been ranked as the most visited group of websites in the world. Copies of the Best Global Brands rankings, comScore rankings and the Bloomberg.com article are attached as annexes to the Complaint. Complainant further submits that it has consistently been honored for its technology and its services, and has received numerous industry awards, dating from 1998. Copies of articles discussing certain of these awards are also attached to the Complaint.
Complainant submits that its GOOGLE mark identifies Complainant’s business that has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Complainant. As a result, the GOOGLE mark and name symbolize the tremendous goodwill associated with Complainant and are property rights of incalculable value. Due to widespread and substantial international use, this mark and name have become famous.
Complainant owns numerous United States and foreign registrations for the GOOGLE mark. Complainant typically brands its products with its house mark, GOOGLE, followed by a descriptive term or phrase. Complainant has furnished a list of trademark registrations attached to the Complaint.
The disputed domain name was registered on October 30, 2003. The disputed domain name currently resolves to a website with no content.
Complainant submits that Respondent has used the GOOGLE mark continuously since well prior to October 30, 2003, the registration date for the disputed domain name. Complainant claims ownership of a number of U.S. trademark registrations issued prior to, or resulting from applications filed prior to, October 30, 2003. Complainant submits that each registration relied upon remains valid and in full force and thus, Complainant has rights in the GOOGLE mark that predate the registration date of the disputed domain name. See, e.g., Google Inc. v. Smith Smithers, FA 826563 (Nat. Arb. Forum Dec. 7, 2006) (“Although [r]espondent’s registration of the [disputed domain names] predate [sic] Complainant’s USPTO registration, Complainant’s filing date of September 16, 1998 predates [r]espondent’s registration [which] sufficiently establishes rights in the GOOGLE Mark”) (re googlevideo.com, googlevideos.com, googlemovie.com, googlemovies.com, googleforums.com and googlewebmaster.com domain names).
Complainant submits that a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the disputed domain name incorporates the famous GOOGLE mark in its entirety, and is confusingly similar to it.
Complainant submits that a domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another’s mark. See, e.g., Google Inc. v. Kun Zhang, FA 1245131 (Nat. Arb. Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the domain) (re googlevideodownload.com domain name); Google Inc. v. Babaian, FA 1060992 (Nat. Arb. Forum Oct. 1, 2007) (finding that where the Registrant merely added of “generic words [like] ‘web,’ ‘data,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar under Policy ¶ 4(a)(i)) (re googledatadrive.com, googlenetstorage.com, googlewebdrive.com, googlewebstorage.com, mygoogledrive.com and mygooglestorage.com domain names).
Complainant submits that the disputed domain name <googleservices.com> merely adds the generic or highly descriptive term “services” to the GOOGLE mark.
Given Complainant’s branding policy whereby Complainant typically uses its house mark, GOOGLE, with a descriptive word or phrase, users seeing the disputed domain name are even more likely to believe the disputed domain name originates with Complainant. The likelihood of confusion is exacerbated by the fact that Complainant offers a service called Google Services for Websites that provides users with tools to enhance websites. As a result, users seeing the disputed domain name are even more likely to believe the disputed domain name originates with Complainant.
Complainant submits that as such, the disputed domain name is nearly identical, and certainly confusingly similar, to Complainant’s GOOGLE mark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that panels established under the Policy have noted, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” Google Inc. v. Mikel M Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (re googlesex.com domain name). Registrant has not been authorized by Complainant to register or use the disputed domain name.
Complainant submits that the disputed domain name is currently inactive. Such inactivity further supports Complainant’s position that the Respondent has no legitimate rights or interests in the disputed domain name. See, e.g., Google Inc. v. Brown Donny c/o donnybrown, FA0902001249402 (Nat. Arb. Forum Apr. 13, 2009) (“Respondent’s failure to make an active use of the disputed domain name indicates that there is no bona fide offering of goods or services…or legitimate noncommercial or fair use…”) (re googleventure.com domain name); Google Inc. v. Burns, FA 726096 (Nat. Arb. Forum Aug.16, 2006) (stating, “given that Respondent has never used any of the disputed domain names . . ., she simply
can not show that she has made a legitimate non-commercial or fair use of any such name”) (re googlecheckout.com, googlematching.com and googleoutdoors.com domain names).
Complainant has not authorized or licensed Registrant to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating Complainant’s trademark is strong evidence that Respondent has no rights or legitimate interests. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA 1076561 (Nat. Arb. Forum Oct. 26, 2007).
Complainant submits that the evidence overwhelmingly supports the conclusion that Registrant registered and is using the disputed domain name in bad faith.
The fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the registrant created the disputed domain name independently. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA 112627 (Nat. Arb. Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J.JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”). Even constructive knowledge of a famous mark like GOOGLE is sufficient. Google v. Abercrombie 1, FA 101579 ( Nat. Arb. Forum Dec. 10, 2001) (“because of the famous and distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name]”) (re googld.com domain name).
Complainant submits that the disputed domain name <googleservices.com> is inactive and not in use and according to research conducted by Complainant, the site appears to have never been active. Such failure to use the disputed domain name, which is confusingly similar to Complainant’s GOOGLE mark, is evidence of bad faith use and registration. See, e.g., Google Inc. v. Brown Donny c/o donnybrown, supra (finding bad faith where there was no evidence the Respondent ever intended to use the domain name, given “any use of the <googleventure.com> domain name, which is confusingly similar to the famous GOOGLE mark, would be an attempt to profit from the likely confusion of internet users.”); Google Inc. v. Burns, supra (basing bad faith use in part on “Respondent’s continued retention and non-use of each of the disputed domain names for approximately 12 months (as of the date of the Complaint), and particularly in light of Complainant’s rights in the mark GOOGLE”) (re googlecheckout.com, googlematching.com and googleoutdoors.com domain names).
Complainant has exchanged communications with Respondent in the period from January to March 2011 in an unsuccessful effort to have the disputed domain name transferred from Respondent to Complainant. Complainant submits that as shown above, Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
In a Response, Barry Robins submits that he registered the disputed domain name along with googleservices.co.uk in 2003 to match the company name of his engineering business Google Services Limited which was incorporated as company no 04947735 on October 30, 2003. Respondent has furnished a print-out of the record at Companies House, in the United Kingdom.
Respondent submits that at that time he had an engineering company Watmoor Engineering Co.Ltd which was dissolved in 2008 that specialized in machine parts and light fabrications. He decided to diversify into providing facilities services, i.e., looking after company premises and equipment especially where manufactured parts are required. He decided to form a new company with a fresh name and feel and came up with Google Services Limited in late 2003.
Respondent submits that he proceeded to market his company and was negotiating his first contracts with a number of “bluechip enterprises” which he identified in the Response.
In May 2004 Respondent received a communication from Willoughby & Partners ( a London law firm ) that they were disputing the use of the company name and acting on behalf of Complainant. Respondent refers to the response he sent by email on September 29, 2004, which has been furnished in an annex to the Response. Respondent’s position was that GOOGLE was not a household name in the United Kingdom in 2003 and was basically an American company with a virtual web presence in the United Kingdom and a minor player having only a quarter of searches in the United Kingdom. Complainant’s business could well have failed at that stage. It still had to list on NASDAQ (2004) and indeed it was 2005 before it became a global brand.
Respondent submits that his company name and web names received absolutely no benefit from any association with Complainant and he submits that he doubts that his clients gave it a second thought in 2003/4.
Respondent submits that as he is “fairly pragmatic” he could see that to continue using the company would give rise to further disputes not something a small manufacturing company could afford and he offered to sell the company and the domain names to Complainant to cover the costs incurred in changing his first contracts back to his old company. Respondent submits that lost orders and delays cost him around £30,000, not to mention goodwill . Respondent states that he refused to sign away the rights to the names as requested. The reply from Complainant’s agent is in the file, and he submits that their reply indicates they believed Respondent had the rights of ownership or they would have taken this further. But typical of a “David and Goliath” situation, no offer of compensation was forthcoming.
Respondent states that he acknowledges that Complainant must protect its brand but asserts that this dispute is not set in 2011 but in 2003 in a foreign country, and he is unhappy that he is suddenly expected to reply to lawyers in California, who could be anyone, in an email and who seem to have lost the ability to actually write a letter which should be the norm with legal matters.
Respondent submits that the basic facts of this case are: Respondent genuinely registered an engineering company in 2003 approved by Companies House in the UK ( who only allow unregistered names ) and registered Internet domain names to suit; Respondent would have derived no benefit from an association with Complainant; Respondent has not since used the names or approached Complainant; Respondent is adamant that these names are genuinely his own and disputes that Complainant can railroad him into handing them over because Complainant has now grown so big.
C. Additional Submissions
In additional submissions Complainant submits that Respondent obtained the disputed domain name <googleservices.com> in 2003, which was six years after Complainant first used the GOOGLE mark and four years after Complainant’s first application for registration of the GOOGLE trademark in the European Union including the United Kingdom, and almost as many years after the GOOGLE mark became well-known.
Complainant submits that there is no credible explanation for registering a domain name that includes GOOGLE and a generic term other than hoping or intending to trade off of the goodwill Google has established in its mark. As other Panels have noted, any "[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known." Google Inc. v. Mikel M Frieje, FA011000102609 (Nat. Arb. Forum, Jan. 11, 2002) (re googlesex.com domain name). Registrant has not satisfied and cannot satisfy this standard.
Complainant submits that whether or not Respondent believes that “Google” was a household name in the United Kingdom in 2003 is irrelevant and does not justify or negate the bad faith registration of the disputed domain name.
Moreover, several articles and ratings contradict Respondent’s belief and show that the GOOGLE trademark was in fact well known in the United Kingdom at the time the disputed domain name was registered. Complainant submits that in December 2002, for instance, prior to the registration of the disputed domain name, Nielsen NetRatings declared Complainant’s GOOGLE website the UK Website of the Year in recognition of its increase in audience share and 4.7 million UK at-home visitors. Then, by January 2004, Nielsen NetRatings declared Complainant’s GOOGLE search engine to be the most popular search engine in Europe, used by more than 55 million Europeans, and noted as being an established part of Internet life. Complainant has furnished evidence of these statements in the form of copy publications. Complainant submits that accordingly, it is clear that GOOGLE was a household name in the United Kingdom at the time of registration and suggests that Respondent was attempting to utilize Complainant’s growing fame and ride the coat-tails of the company enhancing its international reputation.
Complainant submits that it is irrelevant that Complainant was not listed on NASDAQ in 2003 and not listed on Interbrand’s global brands until 2005. Complainant states that the only reason Complainant was not listed as a global brand prior to 2005 is because Interbrand only ranks companies with substantial publicly available financial data, and Complainant was not a public company until 2004. To that end, the fact that the first year Complainant was a public company and eligible to be ranked by Interbrand it appeared as the 38th Best Global Brand is impressive. This notably high ranking in its first year of eligibility demonstrates Complainant’s brand strength and well known global brand awareness in the preceding years, including 2003. With that in mind, there is no doubt that Registrant was aware of Complainant’s growing global presence and brand strength when registering the domain name.
Complainant submits that the length of time of time Respondent has held the disputed domain name is not relevant. Complainant submits that laches is not a defense available under the Policy. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”).
Complainant further argues that notwithstanding that there can be no laches in this case because Complainant contacted Registrant once it became aware of the registration of the disputed domain name <googleservices.com>. When Complainant first learned of the domain name in 2004 it immediately sent a letter, but ultimately refrained from taking any action because the website was not in use and it appeared that the company name was also not in use; all of which is confirmed by Respondent in his response. Further, while a trademark owner has an obligation to police its mark, it is not unreasonable for a trademark owner to refrain from pursuing a possible infringer if there is no affiliated commercial activity.
When the disputed domain name registration was again brought to Complainant’s attention in 2011, Complainant sent multiple communications, including an initial demand letter, stating its rights in the mark and requesting transfer of the disputed domain name to Respondent at the email address listed in the WHOIS record for the disputed domain name. Respondent replied to the first two communications from the same email address Respondent is now using to communicate with the National Arbitration Forum. However, Respondent never replied to the last three communications. Respondent’s assertion that Complainant did not write him a letter about this matter lacks credibility.
Indeed, given Respondent’s lack of response to Complainant’s correspondence, pursuing a complaint under the Policy was Complainant’s only alternative for recovering the disputed domain name.
Complainant asserts that as noted in the Response, Respondent has not used the disputed domain name googleservices.com since 2004. Complainant argues that it is well-established that non-use of a domain name demonstrates a lack of legitimate rights and bad faith under the Policy. See Google Inc. v. Konstantin A Igumnov, FA 1297470, (Nat. Arb. Forum Jan. 15, 2010) (finding failure to use the disputed domain does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy and that non-use is evidence of bad faith use and registration) (re googlechromeos.com). See also Google Inc. v. Aleksandr Ohotov a/ka/a Private Person, FA 1292242, (Nat. Arb. Forum Dec. 17, 2009) (re googlesearchserver.net).
Complainant submits that Respondent has not provided any evidence of legitimate use of the disputed domain name or that he is known by or has legitimate rights in the googleservices.com name. To the contrary, Respondent states in his response that he does not use the name.
Complainant submits that proof of actual confusion is not required to show a domain name is confusingly similar to a complainant’s mark. See, e.g., EAuto, L.L.C. v. Net Me Up, D2000-0104 (WIPO April 13, 2000). (rejecting Respondent’s assertion that “the absence of actual confusion proves that its domain name is not confusingly similar to the mark”).
Complainant submits that the Panel may consider the totality of the circumstances in assessing whether the disputed domain name was registered and used in bad faith. It is well established that the Panel’s analysis need not be limited to the four enumerated factors in Policy ¶ 4(b), which are also listed in Registrant’s Response. See Google Inc. v. Whois Privacy LLC, FA0908001278684 (Nat. Arb. Forum, September 23, 2009).
The fame and uniqueness of the GOOGLE mark can and should be taken into account both in assessing whether the disputed domain name is confusingly similar to Complainant’s mark and in evaluating Registrant’s motivation in registering and using the Domain Name. Selection of such a domain name evidences Registrant’s intent to benefit from a perceived association with Complainant.
Complainant is the owner of the GOOGLE trademark and service mark and provides inter alia web browser services.
Complainant is the owner of numerous trademark registrations for the GOOGLE mark and has established extensive common law rights through its world-wide use of the GOOGLE mark on the Internet and in particular its very successful <google.com> Internet browser.
It is not clear as to whether Respondent is the United Kingdom registered company Google Services Limited or its principal Barry Robins. The company was formed by Mr Robins and disputed domain name was registered on October 30, 2003. On the same date Mr Robins personally registered the ccTLD domain name googleservices.co.uk.
At the time the disputed domain name was registered, Complainant had already established trademark rights and a growing goodwill in the use of the GOOGLE mark on its expanding Internet services.
Respondent has not put the disputed domain name to any active use.
Rules ¶ 15(a) 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."
Policy ¶ 4(a) requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has furnished evidence that it is the owner of the trademark GOOGLE through its worldwide portfolio of trademark registrations. Furthermore, Complainant has provided evidence that it has acquired extensive rights and goodwill at common law through its use of the GOOGLE mark on its very successful web browser and other business activities in the United Kingdom where Respondent resides.
Aside from the gTLD “.com” extension, which may be ignored for the purposes of comparing Complainant’s GOOGLE mark with the disputed domain name, the disputed domain name consists of two elements, namely the word “google” and the word “services”. The former element is identical to Complainant’s mark and the word “google” is both the dominant and distinctive element of the disputed domain name. The second element “services” is both descriptive and lacking in distinctiveness.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s GOOGLE mark. The addition of the descriptive element “services” would not reduce the likelihood of confusion in any way. This is particularly so because Complainant uses its GOOGLE mark in providing services on the Internet; furthermore, because it is Complainant’s custom to use the GOOGLE mark as a house mark in combination with a descriptive element in providing its services.
This Panel finds that Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. The burden of proof therefore shifts to Respondent to prove that it has such Rights.
Respondent states that in 2003 it incorporated a registered company in the United Kingdom, GOOGLE SERVICES LIMITED. On the same day Respondent registered the disputed domain name and the ccTLD <googleservices.co.uk>.
This Panel is satisfied that on the balance of probabilities Respondent’s company GOOGLE SERVICES LIMITED never traded and was registered as a sham in an endeavor to give the registration of the two domain names some legitimacy. Based on the evidence before this Panel Complainant had already established a reputation and goodwill in the GOOGLE mark when Respondent registered the disputed domain name and the eponymous United Kingdom registered company.
Because the company never traded and Respondent has been passively holding the disputed domain name, the essential question for this Panel to decide is whether the mere registration of a company name is sufficient under the Policy to give Respondent rights or legitimate interests in the disputed domain name.
Policy ¶ 4(c) provides a list of circumstances where a respondent may show that it has rights or legitimate interest in a domain name namely
(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 organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue.
On the evidence, Respondent has not at any time used or made 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. There is no question of Respondent making a non-commercial use of the disputed domain name. Respondent claims to have registered the domain name for the purposes of his commercial business.
That leaves the question as to whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights.
In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847, the panel addressed circumstances where the respondent relied on a Tunisian trademark registration and held that it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. “To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”
The Madonna decision was followed in Chemical Works of Gedeon Richter Plc v. Covex Farma S.L. WIPO Case No. D2008-1379 where the panel held that “[i]t is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and thus by an identical domain name. However, that presumption is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (WIPO Oct. 12, 2000). The facts in this case indicate that Respondent registered the trademark CAVINTON in Slovenia to facilitate taking unfair advantage of Complainant's previously existing trademark rights in CAVINTON...”
More recently in British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817 the panel adopted the reasoning of the panel in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 (WIPO July 23, 2004):
“(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent's domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant's rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is ‘legitimate'.”
In the present case, while the issue relates to the name of a dormant registered company as distinct from a registered trademark, similar considerations should apply. On the evidence according to the WhoIs data furnished by the Complaint, the registrant is “GOOGLE SERVICES”. Therefore the registrant/Respondent, may be either be the registered company GOOGLE SERVICES LIMITED or its principal Barry Robins. The address given for the registrant on the WhoIs details appears to be that of Barry Robins and not the registered office of the company. Furthermore, in his email to Complainant’s agent in September 2004 he stated that the ccTLD domain name <googleservices.co.uk> is personally owned by himself.
Barry Robins does not claim that he has personally ever carried on business as or been commonly known as GOOGLE SERVICES.
Notwithstanding this context, even giving Respondent the benefit of the doubt and accepting for the sake of argument that the United Kingdom registered company and not Mr Robbins himself is the registrant of the disputed domain name, this Panel finds that Respondent has no rights or legitimate interest in the disputed domain name. The chronology of events indicates that the company and its controller were aware of Complainant’s rights in, goodwill in and ownership of the GOOGLE mark and name when the company was incorporated and named, and when the disputed domain name was chosen and registered. There is no plausible explanation given as to how or why Mr Robins chose to incorporate and name a company with the distinctive and unique name GOOGLE as the dominant element in his company’s name. Mr Robins claims to have commenced negotiating contracts with “blue chip” companies on behalf of the newly registered company but, has provided no evidence that the company in fact ever traded; and the Companies’ House search provided by Respondent indicates that the company is now dormant.
The letter from Complainant’s agent to Respondent dated October 15, 2004 demonstrates that Complainant did not take action at that stage because Mr Robin’s company had not commenced trading in connection with it services under the name “Google Services;” however, Complainant reserved its full rights and stated that it would be monitoring Respondent’s activities closely in the future. Respondent has admitted that he has not used the name GOOGLE SERVICES since that date.
Taking all of these factors into consideration, this Panel finds that for the purposes of this proceeding under the Policy, the choice of the name GOOGLE SERVICES LIMITED by Respondent and the incorporation of the company was a sham for the purposes of circumventing the Policy. While this Panel may well have come to a different conclusion if Respondent had carried on a bona fide business using the name GOOGLE SERVICES LIMITED for the manufacture of metal structures and parts, in an industry far removed from Complainant’s interests in the year 2003, in the circumstances of the present case, this Panel finds that Respondent has no rights or legitimate interest in the disputed domain name. This Panel finds that Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
In the course of correspondence between Complainant’s agent and Respondent, Mr Robbins offered to sell the company name and “the web address” to Complainant. In the same email he states that the ccTLD <googleservices.co.uk> is personally owned by himself. There was no particular sum of money identified but, it may be inferred that Respondent had a sum in mind that was in excess of his documented out-of-pocket costs related to the registration of the disputed domain name. This Panel takes an inference that Respondent chose the company name, incorporated the company and registered the disputed domain name in order to sell them to the Complainant and despite his denial he had no other reason for doing so.
In finding that the disputed domain name was registered and is being used in bad faith, this Panel is also conscious that Complainant had an established web presence when the disputed domain name was chosen and registered; by his own admission Respondent acknowledges that Complainant’s search engine carried out one quarter of Internet searches in the United Kingdom in 2003, so he must have been aware of Complainant’s growing reputation when he registered the disputed domain name; the word GOOGLE is a coined word having no reference to manufacture of metal structures and parts; and Respondent has failed to give any explanation as to how the distinctive name of his company and the disputed domain name were chosen.
This Panel finds that Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleservices.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: July 6, 2011
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