Google Inc. v. Goldberg Client Services, Inc.
Claim Number: FA1111001414431
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Goldberg Client Services, Inc. (“Respondent”), represented by Aaron Goldberg, Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmaill.com>, registered with Fabulous.com Pty Ltd. (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2011; the National Arbitration Forum received payment on November 8, 2011.
On November 7, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <gmaill.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 November 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@gmaill.com. Also on November 9, 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 Response, determined to be complete, was received on December 1, 2011, after the deadline to file a Response.
Respondent requested a three-member panel, but due to the untimeliness of the Response, Respondent’s request cannot be granted.
A timely Additional Submission was filed by Complainant on December 5, 2011.
On December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
On December 21, 2011, Complainant filed a second Additional Submission, which is further addressed below.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns numerous United States and foreign registrations for Complainant’s Trademark dating back as early as 2004 and claiming use in the United States dating back to 1998. Complainant has continuously used Complainant’s Trademark in commerce since 1998 in connection with the provision of email and electronic messaging services. Numerous other trademark registrations owned by the Complainant apply to many other goods and services.
Respondent is Goldberg Client Services, Inc., of Panama, and Respondent registered the Disputed Domain Name on April 1, 2004.
As of October 24, 2011, the Disputed Domain Name redirects users to a website that offers users prizes in exchange for completing what is referred to as “our” annual visitor survey. Users to the website to which the Disputed Domain Name directs are asked: for the user’s email address; for the user’s cell phone number; to enter a contest; to sign up for recurring text message plan at a monthly charge; and an adware toolbar.
The Disputed Domain Name is identical or confusingly similar to Complainant’s Trademark because it merely adds an additional “l” and a top-level domain name identifier, “.com.”
Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name. Complainant did not give permission for Respondent to use Complainant’s Trademark. Further, Respondent is committing “typosquatting” and “phishing,” both for profit, by mimicking Complainant’s Trademark, and as such Respondent is not engaging in a bona fide offering of goods or services.
Respondent’s registration and use of the Disputed Domain Name was and is in bad faith. Respondent’s use of the Disputed Domain Name to redirect users to a website that offers prizes for completing a survey constitutes an effort to disrupt Complainant’s business.
The Disputed Domain Name directs to a page that is similar in general look and feel to that of Complainant’s website, and as such, Respondent is attempting to use the Disputed Domain Name to create the impression that Respondent’s website originates with Complainant, is affiliated with Complainant, endorsed by Complainant, or sponsored by Complainant.
Further, given that the Disputed Domain Name is nearly identical to Complainant’s Trademark and is otherwise not an English word (or a known word in any other language), it is impossible to conceive of any potential legitimate use of the Disputed Domain Name.
Further still, “phishing” is itself evidence of bad faith.
B. Respondent
Respondent is in the business of marketing and advertising, including online surveys to gather data through a series of questionnaires. Among these types of surveys are “trend” questionnaires. Trend studies focus on a particular population, which is sampled and scrutinized repeatedly. While samples are of the same population, they are typically not comprised of the same people. Trade studies, since they may be conducted over a long period of time, do not have to be conducted by just one researcher or research project. A researcher may combine date from several studies of the same population in order to show a trend. In this case, the trend study pertains to internet users.
Respondent’s business is conducted from various domain sites, including the Domain at issue here, which was created on April 1, 2004.
The Disputed Domain Name is not identical or confusingly similar to a trademark or service mark in which complaint has rights superior to Respondent.
Complainant’s rights to Complainant’s Trademark do not preclude Respondent’s use of the Disputed Domain Name. Complainant’s Trademark is used in connection with the provision of email and electronic messaging services as is explicitly stated in two United States trademark registrations thereof. Further, the landing page for Complaint’s Gmail product is very clear: “A Google approach to email.” In contrast, Respondent’s web pages make no claim to any email services of any type. Notable, neither of the trademarks identified by Complainant are ones claimed for goods and services overlapping with Respondent’s business of marketing and advertising.
Although Complainant appears to allege that consumers would happen upon Respondent’s website, by way of the Disputed Domain Name, while “seeking Google’s services,” Complainant misconstrues its rights. THE GMAIL Marks pertain only to email services, not the entirety of Complainant’s services, as Complainant would like to assert. Nowhere in the law governing trademark registration does an enforceable right appear simply because “the GMAIL email service integrates with various other Google products and services.” Thus, the scope of the mark refer simply to email services and onto to advising and marketing business such as those of Respondent.
Complainant’s rights in the GMAIL mark are limited insofar as the mark is merely descriptive or generic. The term “mail” is generic and one in which Complainant cannot hold exclusive rights. The addition of the single letter “g” does not alter this or create any useful distinction from this generic word. It is to be noted that incongruously Complainant argues that the addition of a single letter “l” to the expression “gmail” does not create a sufficient distinction between Complainant’s Trademark and the Disputed Domain Name. Complainant cannot have it both ways, and if the expression “gmail” is distinguishable over the word “mail,” then by the same argument the expression “gmaill” is distinguishable over the expression “gmail.”
The origin of Complainant’s Trademark is in 1994, when a predecessor in interest to Complainant, InterActive Visions, Inc. (“IVA”), a division of Precision Research, Inc., first developed its “gmail” product as the first commercial internet blogging program, which was developed as a means of effectively communicating between any sized group of individuals that share a common interest, as indicated in the initial trademark registration. IVA’s use of its GMAIL mark was intended to represent an abbreviated term for “Global Mail,” and not for “Google Mail.” As such, under IVA’s use, the trademark GMAIL mark is a generic shorthand for “Global Mail,” over which Complainant cannot claim exclusive rights.
Complainant’s use of Complainant’s Trademark in connection in its services began only in 2004, which was not for the same services for which Complainant’s Trademark was used by IVA. As such, any secondary meaning developed in Complainant’s Trademark by IVA, and before 2004, does not count in favor of Complainant. Rather, any secondary meaning developed in Complainant’s Trademark that Complainant now attempts to assert in this action began no earlier than 2004, and Complainant’s assertions that it has used Complainant’s Trademark in the United States since 1998 is false.
Complainant’s rights in Complainant’s Trademark are not superior in time to Respondent’s rights in the Disputed Domain Name. Complainant filed its own trademark applications on April 2 and April 7, 2004. Further, Complainant’s actual use of Complainant’s Trademark in connection with its own services was limited throughout 2004 to a test version made available to a small number of email aficionados on an invitation only basis. Such a use does not constitute “use in commerce.” Full public use of Complainant’s Trademark in commerce did not take place until 2007.
It is to be noted that in Complainant’s 2004 securities filings, Complainant’s Trademark was admitted to be an “unregistered” mark.
As such, Complainant’s registration of Complainant’s Trademark and it use thereof in connection with its own services was after Respondent registered the Disputed Domain Name, which occurred on April 1, 2004. At best, Complaint’s registration of Complainant’s Trademark and Respondent’s registration of the Disputed Domain Name were simultaneous. Assuming, arguendo, that is correct, under no circumstances could Respondent have known of the Complainant’s Trademark, nor can Complainant claim that Complaint’s Trademark was famous sufficient to support its rights alleged in the Complaint insofar as to force Respondent to relinquish the Disputed Domain Name.
Complainant has not met its burden of proof of bad faith registration and use under Policy paragraph 4(a)(iii).
There is no circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s document out-of-pocket costs directly related to the Disputed Domain Name. Indeed, other than the instant action, Respondent received no notice of Complainant’s rights, no request to cease-and-desist, and no offers to purchase the Disputed Domain Name.
Respondent cannot be said to have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name because the best Complainant can argue is that the Disputed Domain Name was registered concurrently with Complainant’s registration of Complainant’s Trademark. Also, the Disputed Domain Name is not identical to Complainant’s Trademark, and further, Complainant has been free to register domain names reflecting its mark, such as <gmail.com>.
Respondent cannot be said to have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. Respondent and Complainant are not competitors.
Respondent cannot be said to have intentionally attempted to attract, for commercial gain, Internet uses to Respondent website, by creating a likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. Respondent’s site gives internet browsers an opportunity to participate in a survey. None of the website pages identified in the Complaint make reference to Google or Gmail. No email services are offered in connection with the Disputed Domain Name.
Respondent has rights and legitimate interests in the domain. Respondent is in the business of marketing and advertising. Complainant’s Trademark is registered only for email services. Effectively, Complaint’ has no legitimate interest in a category of gods and services relating to marking and advertising such as those of Respondent.
Furthermore, Respondent is in the same position as various other parties that Complaint has pursed in other jurisdictions in enforcing Complaint’s Trademark, and in these other instances Complainant has been unsuccessful. In these other cases, the respondent’s domain name registrations predated Complainant’s registration of Complainant’s Trademark, as is the situation in this action.
C. Complainant’s Additional Submissions
Confusing Similarity
Complainant acquired rights in Complainant’s Trademark in 1998 through the acquisition of a third party, Precision Research, Inc., and filed an assignment of Precision Research’s entire interest in the GMAIL mark. Complainant also used Complainant’s Trademark in United States commerce at least as early as April 2004, and owns filings for Complainant’s Trademark that date back to April 2004.
Respondent’s references to an April 1, 2004 press release by Complainant regarding the public launch of the GMAIL services, and also a 2004 prospectus that lists Complainant’s Trademark among Complainant’s trademarks, is supportive of Complainant’s rights, and are adverse to Respondent. Given the considerable press attention prior to the launch, there is little question that Respondent was aware of the press coverage, and therefore Complainant’s Trademark, at the time the Disputed Domain Name was registered.
Complainant’s Trademark is fanciful and not generic. It is to be noted that the United States Patent and Trademark Office has never refused registration of Complainant’s Trademark on the grounds that it is descriptive or generic.
The Disputed Domain Name includes Complaint’s Trademark in its entirety, and differs only by the addition of the letter “L,” a common mistyping when users enter Complainant’s Trademark into web browsers and email addresses.
Respondent’s website copies the look and feel of Complaint’s GMAIL and GOOGLE logos, and invites users to participate in “our annual visitor survey.” Respondent’s website also promises that completing the survey will help “enhance user experience,” presumably referring to their user experience with Complainant’s email service. Respondent’s website is clearly presented in a manner intended to maximize confusion and cause users to believe that it is associate with Complainant’s services and capitalize on the traffic generated from owning a domain name that is only one letter different from Complaints popular email service.
Rights or Legitimate Interests
Respondent provides no evidence to support its assertion that it offers “marketing and advertising services.” Rather, respondent is part of a large syndicate of website operators that host surveys on domain names that are confusingly similar to well-known brands in an effort to generate revenue.
Respondent claims to provide trend studies, but does not identify the target customers of these studies or provide examples of its “research” findings.
Bad Faith
Respondent’s activities and website content are part of a larger scheme involving “survey sites” offered at domain names nearly identical to well known Internet brands. Whether Respondent or another party controls these websites, their ubiquity and fraudulent nature highlights Respondent’s bad faith here.
Other panels have concluded that these types of websites amount to nothing more than illicit phishing schemes, and have found bad faith.
D. Complainant’s Second Additional Submission
On December 21, 2011, Complainant submitted a Second Additional Submission. This Second Additional Submission is found by this Panel to be untimely pursuant to the NAF Supplemental Rule 7 and has not been considered.
Complainant is the owner of numerous trademark registrations, both domestic and foreign, for the trademark GMAIL.
Respondent is a Panamanian entity with no contacts to Palo Alto, California.
Respondent registered the domain name <gmaill.com> on or about April 1, 2004.
Complainant made a public announcement that it was going to be starting an Internet service using the expression “gmail,” and this was reported on or about March 31, 2004 in InfoWorld Home (www.infoworld.com).
Paragraph 15(a) of 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 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.
Preliminary Issue: Deficient Response
The Response was not timely filed as required by Rules; however, for purposes of resolving the underlying issues between the parties, the Panel has reviewed and considered the Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003)(“[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real disputes between the parties that this submission should be allowed and given due weight.”)
Rights in a trademark for purposes of the Policy can be established by way of ownership of a trademark registration by a national trademark office, such as, but not limited to, the United States Patent and Trademark Office. See Miller Brewing Co., v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2010) (finding that the complainant had established right to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc., v. Alviera, FA 914943 (Nat. Arb Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS marks were adequate to establish its rights in the mark pursuant to policy ¶ 4(a)(i)).
In the present matter, Complainant has rights in a trademark for purposes of Policy ¶4(a)(i) by virtue of its ownership of a trademark registrations which it acquired from a third party, and in addition, its ownership of trademark registrations which it initially filed in its own name.
The threshold consideration of confusing similarity is determined at the level of the involved trademark and the involved disputed domain name and is determined by way of a simple comparison of the two. For purpose of making the comparison, generic top-level domain identifiers and minor variations, such as the addition or subtraction of a single character, are ignored. See Islewoth Land Co., v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a policy ¶4(a)(i) analysis.”); see also Barnsandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnsandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter ”s” and generic top-level domain to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶4(a)(i)).
In the present matter, Complainant has demonstrated that the Disputed Domain Name is confusingly similar to Complainant’s Trademark in that the Disputed Domain Name differs from Complainant’s Trademark only by the addition of a single letter “L” and a top-level domain identifier, “.com.”
As such, Complainant has established the first element of the Policy.
Respondent’s argument that Complainant’s Trademark is generic is unpersuasive. Whatever might be said about the expressions “Global Mail” or “Google Mail,” the expression “gmail” is equivalent to neither, but rather is fanciful.
Respondent’s arguments about the timing of its registration of the Disputed Domain Name in comparison to the timing of Complainant’s acquisition of its rights in Complainant’s Trademarks is better analyzed as an issue of bad faith under Policy ¶4(b). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶4(a)(i) but may prevent a finding of bad faith under Policy ¶4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Similarly, Respondent’s arguments as to the similarity or dissimilarity of the parties’ services and/or customers is better analyzed as an issue of bad faith under Policy ¶4(b).
Under Policy 4(a)(ii), a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the present matter, Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. Complainant also contends that the WHOIS record for the Disputed Domain Name identifies the domain name registrant as “Goldberg Client Services, Inc.,” and makes no connection between Respondent and the disputed domain name. In its Additional Submission, Complainant argues that Respondent has asserted that it is known by the Disputed Domain Name or has used the Disputed Domain name in commerce. Complainant asserts in its Additional Submission that Respondent does not claim to have registered a corporate entity by the Disputed Domain name, does not use the Disputed Domain Name on its website, and does not claim to have used or acquired rights in the GMAILL mark elsewhere.
In light of this information, the Panel determines that Complainant has carried its burden, and the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests.
Respondent argues that before any notice of the dispute (the first notice having been the instant complaint) it used the Dispute Domain Name in connection with a bona fide offering of services, to wit: the business of marketing and advertising, including online surveys to gather data through a series of questionnaires, such as trend surveys. Whatever might be said generally about the business of collecting marketing data through the use of on-line surveys, and subject to further comments below, this Panel finds that this is a legitimate business, and such was Respondent’s business before notice to it of a dispute with Complainant.
Complainant argues that Respondent provides no specific evidence of Respondent’s alleged business and for that reason this Panel should reject Respondents assertions on the point. This Panel disagrees. In addition to Respondent’s assertions, which are to be given due weight in this summary administrative proceeding, Complainant provides screen-shots of Respondent’s website with respect to Respondent’s efforts to collect information from Internet users, and these screen shots are not inconsistent with Respondent’s description of its activities.
Complainant also argues that Respondent’s business is not a bona fide offering of services under Policy ¶4(c)(i) because the manner in which Respondent attracts its survey subjects and obtains information from them is not legitimate, but rather is the result of “typosquatting” (intentional similarities with Complainant’s Trademark to take advantage of the likelihood for typing errors on the part of internet users), “phishing” (mimicking Complainant’s website in order to obtain personal information), and an effort to attract internet users by creating a likelihood of confusion with Complainant’s Trademark. Many panels have found an exception to Policy ¶4(c)(i) under such circumstances, and this Panel agrees with those panels. However, this Panel believes that the analysis of the point belongs under the analysis for Policy¶ 4(b), and if bad faith conduct is found there, then Respondent’s activities are not a bona fide offering of services for purposes of Policy ¶4(c)(i).
As is noted below, this Panel does find that Respondent has used the Disputed Domain Name in bad faith, and as such, Respondent’s activities are not a bona fide offering of services for purposes of Policy ¶4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (Nat. Arb. Forum July 23, 2011) (“The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), where Respondent is directing Internet users to a survey website for its own commercial gain.”); see also Wachovia Corp. v. Carrington, WIPO Case No. D2002-0775 (October 2, 2002) (“Although Respondent has provided users with access to . . . purported surveys about users’ online experiences, these services are not ‘bona fide’ because Respondent is using the domain name[] in bad faith for the purpose of diverting users to his own site through confusion.”)
As such, Complainant has established the second element of the Policy.
This Panel agrees with Respondent with respect to Policy ¶4(b)(i), ¶4(b)(ii), and ¶4(b)(iii). Respondent did not register or acquire the Disputed Domain Name for the purpose of selling or transferring the Disputed Domain Name to Complainant or a competitor of Complainant for a profit; no argument has been made and no evidence has been brought forward to this effect. Respondent did not register the Disputed Domain Name primarily for the purpose of preventing Complainant from reflecting Complainant’s Trademark in a domain name; no argument has been made and no evidence was presented that Respondent has a history of doing so, and Complainant has successfully registered domain names that reflect Complainant’s Trademark. Respondent did not register the Disputed Domain Name to disrupt the business of a competitor; Complainant and Respondent are not competitors, and Respondent registered the Disputed Domain Name for its own independent purposes without any intention to cause harm to Complainant’s business.
“By using the [disputed] domain name, you [respondent] have intentionally attempted to attract for commercial gain, Internet users to your web site…, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on you web site…”
Respondent’s intent in this regard is clear from several facts.
First and foremost, the Disputed Domain Name is virtually identical to Complainant’s Trademark. Complainant’s Trademark is fanciful, and for this reason it is very unlikely that Respondent could have generated the Disputed Domain Name independently. The more reasonable explanation is that Respondent intentionally copied Complainant’s Trademark.
Respondent registered the Disputed Domain Name on April 1, 2004, which was one day after Complainant made a public announcement, reported in InfoWorld Home (www.inforworld.com), about its intention to begin a web based service using Complainant’s Trademark. It is very unlikely that Respondent’s registration of a virtually identical domain name to a fanciful mark one day after a public reporting of its impending use was a mere coincidence. The more reasonable explanation is that Respondent intentionally copied Complainant’s Trademark from the announcement.
Further, the difference between the Disputed Domain Name and Complainant’s Trademark is a single “L” within the Disputed Domain Name. Moreover, this additional letter is a duplication of the final letter of the Complainant’s Trademark and sits in the final position within the involved expression, both of which, as a matter of the psychology of perception, tend to receive little or no attention on the part of a perceiver. This is an excellent manner in which to hide a difference, so much so that the only reasonable explanation is that Respondent intended to hide the difference, while at the same time having a difference such that a domain name could be registered.
Further, the look and feel of the website to which the Disputed Domain Name directs Internet users (“Respondent’s Website”) is very similar to the first page of the website to which Complainant’s domain name directs. Ordinarily, the contents of a complainant’s and/or a respondent’s websites are not relevant to an analysis under the Policy. Ordinarily the concern under the Policy is with “initial interest confusion” and the comparisons are at the level of the involved trademark and disputed domain name. However, in the present matter, this Panel finds the look and feel of Respondent’s Website to be instructive as to Respondent’s intention. Respondent’s Website includes a very prominent presentation of the expression, “Give aways.” The presentation of this expression is interesting because the letters are individually and separately colored with a bright palate using the same hues of red, blue, yellow and green that Complainant often uses on its website for presentation of the expressions “Google” and “Gmail,” and the expression “Give aways” by Respondent uses the same font Complainant often uses on its website for the expressions “Google” and “Gmail.” Again, it is very unlikely this is a coincidence, but the more reasonable explanation is that Respondent intentionally copied these aspects of Complainant’s website.
In addition, Respondent’s Website includes a prominent presentation of the expression “Thank You.” Again, the presentation of this expression uses the same color scheme as noted, and the font used for this expression is fanciful, each letter being represented by an icon in the general shape of a letter, such as an upside down horseshoe for an “n”, a sling-shot for the letter “y”, and an image of the globe for an “o.” This approach is similar to the fanciful presentation of the expression “Google” using various and differing icons for the different letters that Complainant presents from time to time on its website.
In addition, Respondent prominently presents the following sentence on Respondent’s Website: “You’ve been selected form the Palo Alto Region to take part in our annual survey.” This sentence includes the word “our.” In itself this word is innocuous and could be interpreted as referring to Respondent, but in combination with the Disputed Domain Name and the look and feel of the expression “Give aways,” this word “our” could also be easily interpreted, and is likely interpreted by many Internet Users, as referring to Complainant.
In addition, the above noted sentence presented on Respondent’s Website includes the words “Palo Alto.” Again, these words in themselves are innocuous. However, nothing in the record indicates that Respondent, a Panamanian entity, has a connection to Palo Alto, California. In contrast, Complainant does have a connection with Palo Alto, California, or at least a connection to “Silicon Valley,” a general geographic concept that includes Palo Alto. Without ascribing too much sophistication to the average Internet user with respect to Complainant’s business and/or the location of its headquarters, many people do know about Palo Alto and the connection therewith by many of the more established Internet and high tech companies, including Apple, Sun Microsystems, Ebay, and Complainant. If one wanted to create a connection in the mind of an Internet user between a website and an established hi-tech company, such as Complainant, and thereby create a sense of comfort on the part of an Internet user that she or he is interacting with a established Internet company, making a reference to Palo Alto would be supportive of such an effort.
Taking the aforementioned points in combination, it is apparent that Respondent is attempting to create the impression that its website originates with Complainant, which then provides insight as to Respondent’s intention with respect to the registration of the Disputed Domain Name, to wit: Respondent has been attempting to attract users to Respondent’s Website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s Website.
The Remaining issue concerns whether Respondent’s Website is being operated “…for commercial gain…” for purposes of Policy ¶4(b)(iv). This Panel finds that it is. One does not expend the level of effort evident in Respondent’s Website without a reason. No argument has been made that Respondent’s motivation for collecting data about Internet users is for scientific or charitable purposes. The only other option is that the motivation is for profit. Further, it is well known that information about Internet users is a valuable asset that is commonly bought and sold, and such is the more reasonable explanation in the present action.
As such, Complainant has established the third element of the Policy.
Respondent argues that it registered the Disputed Domain Name on April 1, 2004, before Complainant had acquired rights in Complainant’s Trademark, and therefore the complaint must be denied. This is not correct. Policy 4(b)(iv) does not contain a timing element such that a complainant must have had trademark rights before a respondent filed for a disputed domain name. As such, a complainant is free to pursue and prevail in an action under the Policy even though it did not have trademark rights at the time a respondent registered a disputed domain name, provided the complainant thereafter acquires the requisite trademark rights and the other aspects of Policy 4(b)(iv) are satisfied, as is the situation in the present action.
Respondent argues that its use of the Disputed Domain Name is for different purposes (referring to trademark classes of goods and services) than Complainant’s use of Complainant’s Trademark, and “…having rights in a mark by itself does not preclude another from establishing rights in it at the same time and does not show that Respondent has not rights or legitimate interests in the domain.” This argument is off-point. Whereas the noted statement may be true in the context of litigation with respect to trademark rights, and whereas trademark law principles can be relevant to actions under the Policy, the Policy is not defined by trademark law principles. The Policy is its own regime defined by its own principles, as noted in this award. See Abbott Labs., v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution”: in a domain name dispute proceeding because the UDRP Policy applies only to abuse cybersquatting and nothing else).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmaill.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: December 22, 2011
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