Google Inc. v. Wolfgang Sauer / W.B. Sauer / Wolf Internet Services LDC / Keith Carpenter
Claim Number: FA1202001430759
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Wolfgang Sauer / W.B. Sauer / Wolf Internet Services LDC / Keith Carpenter (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gongle.com>, <gogleca.com>, <gogleo.com>, and <googglee.com> (the "Domain Names"), registered with Enom, 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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2012; the National Arbitration Forum received payment on February 23, 2012.
On February 23, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <gongle.com>, <gogleca.com>, <gogleo.com>, and <googglee.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@gongle.com, postmaster@gogleca.com, postmaster@gogleo.com, and postmaster@googglee.com. Also on March 2, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 19, 2012.
Complainant submitted an Additional Submission that was received on March 26, 2012 in compliance with Supplemental Rule 7.
On April 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
Having reviewed the communications records, the Panel finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Facts
Google is a Delaware corporation located in Mountain View, California.
The GOOGLE Mark and name was created in 1997. Since that time, Complainant's search engine 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 <google.com> and Complainant owns and operates hundreds of additional GOOGLE-formative domain names, including nearly every top-level country-code domain consisting solely of the GOOGLE Mark.
Complainant's search engine maintains one of the world's largest collections of searchable documents. The search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content in many different languages.
The GOOGLE Mark was found to be one of the top ten Best Global Brands in each of the last three years. Additionally, Complainant's website has been recognized as one of the most popular destinations on the Internet for many years, well before the registration of the Domain Names. comScore, among others, ranked Complainant's websites as among the most-visited groups of websites as early as 2004. Complainant has consistently been honored for its technology and its services, and has received numerous industry awards. Complainant also offers co-branded web search solutions and has hundreds of thousands of publishers in its content network. In addition to being accessible from desktop PCs, Complainant's adaptable, highly scalable search technology can also be accessed from most mobile and wireless platforms.
Complainant also offers a wide range of products and services beyond search.
The GOOGLE Mark identifies Complainant's award-winning, proprietary, and unique search services, search engine technology, and associated products and services. The GOOGLE Mark 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 substantial goodwill associated with Google and are of immense value. Due to widespread and substantial international use, the GOOGLE Mark and name have become famous.
Complainant owns numerous United States and foreign registrations for the GOOGLE Mark (the "Registrations") dating back to as early as 1999. Each Registration remains valid and in full force and effect. Examples are: U.S. Trademark Registration No. 2,806,075 registered January 20, 2004, which protects the GOOGLE Mark for various services including "providing multiple user access to proprietary collections of information by means of global computer information networks"; U.S. Trademark Registration No. 2,954,071 for various goods and services including "electronic retailing services."
Respondent registered the Domain Names on the following dates: January 3, 2005 (<gogleca.com>), April 21, 2005 (<googglee.com>), and August 21, 2005 (<gongle.com> and <gogleo.com>).
As of February 21, 2012, the Domain Names were all registered to either "Wolfgang Sauer" or "W.B. Sauer," with a listed address of 112 Woodland Dr., Millersburg, Ohio 44654, United States. The registrant e-mail address for <gogleca.com> and <googglee.com> was listed as "wolfi@wolfis.com." The registrant e-mail address for <gongle.com> and <gogleo.com> was listed as "wolfi@roadrunner.com."
Sometime after the filing and service of this Complaint, Respondent modified the Whois record for <gongle.com> so that it is now registered to "Wolf Internet Services LDC" and “Keith Carpenter." However, the contact e-mail address for <gongle.com> remains "wolfi@roadrunner.com," and the contact telephone and fax numbers also remain the same as previously listed.
An online search for "Wolf Internet Services LDC" returns what appears to be Respondent's website at <wolfis.com>. "Wolf Internet Services LDC" is run by "Wolfgang Sauer" with the e-mail address "wolfi@wolfis.com."
As of the initial filing of this Complaint, <gongle.com> and <gogleo.com> redirect users to <quizstope.com> and <surveytakeinternet.com>, respectively. Those websites immediately resolve to a pop-up screen that states "Congratulations Google User! You are the California winner for [date]. Please select a prize and enter your email on the next page to claim." Users are then directed to websites that state: "Google Winner" and "You are Today's California Winner!" The websites also feature a capital "G" in a blue, stylized font, reminiscent of the "G" Complainant used previously as a favicon and logo.
Respondent's websites purport to offer Complainant's misdirected users "prizes" in exchange for providing personal and confidential information, such as the user's name, home address, cell phone number, home telephone number, birth date, social security number, and e-mail address.
Same entity
Although Respondent has attempted to modify the Whois record for <gongle.com>, Complainant submits that all four Domain Names in this proceeding in fact remain under the control of a single individual or entity, namely, Wolfgang Sauer. That unity of control is supported by the use of the same telephone numbers, e-mail addresses, and other contact information throughout the Whois records for the Domain Names.
Complainant accordingly, respectfully requests that the Panel find that the Domain Names are registered to the same entity under multiple aliases pursuant to Supplemental Rule 1(d), and render a decision as to all of the Domain Names.
Domain names owned by Respondent have been the subject of at least five prior UDRP proceedings, all of which found in favor of the Complainant. These include: Allison Wing v. Woljis.com c/o Wolfgang Sauer, FA 655492 (Nat. Arb. Forum Apr. 25, 2006) (<egiggles.com>); American Musical Theatre of San Jose, Inc. v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA 797527 (Nat. Arb. Forum Oct. 30, 2006) (<amtsj.com>); LFP IP, LLC, et al. v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA 143990 (Nat. Arb. Forum Apr. 7, 2008) (<ihustler.com>); Societe des Produits Nestle SA v. Wolf Internet Services LDC; Wolfgang Sauer, D2008-1626 (WIPO Dec. 22, 2008) (<davigel.com>); and State Farm Mutual Automobile Ins. Co. v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA 1269935 (Nat. Arb. Forum July 31, 2009) (<statfamr.com>).
On December 20, and 27, 2011, Complainant e-mailed Respondent in an effort to resolve this dispute amicably and have the Domain Names transferred to Complainant. Respondent has not responded to this correspondence.
Confusing similarity
Complainant has used the GOOGLE Mark continuously since well prior to January 3, 2005, the earliest registration date for the Domain Names. Indeed, Google owns U.S. registrations that issued well prior to that date. Each remains valid and in full force. Thus, Complainant owns rights in the GOOGLE Mark that predate the registration date of the Domain Names.
In each of the Domain Names, Respondent has merely replaced, transposed, or added one or two letters to the famous GOOGLE Mark. <gongle.com>, <gogleo.com>, and <googglee.com> all appear to be intended to capitalize on their near identity to the GOOGLE Mark. <gogleca.com> appears intended to capitalize on users seeking to access Complainant's Canadian-specific site at <google.ca> (if a user enters a domain name into a browser address bar but omits a TLD (or the period between the second-level domain and the TLD), some browsers will automatically populate the ".com" and load the corresponding website).
None of the replacements or additions creates a term recognized in the English language, and as discussed in the preceding paragraph, all appear intended to capitalize on user misspellings or typographical errors when seeking to access Complainant's services on the Internet. The mere addition of a minor misspelling or typographical error in a mark does not create a new or different mark in which Respondent may claim to have legitimate rights.
Lack of rights or legitimate interest
As an initial matter, the GOOGLE Mark is so well known throughout the world that it is difficult to conceive of any purported rights or legitimate interests Respondent may claim in the Domain Names. Additionally, Respondent's registration of at least four domain names that are nearly identical to and merely misspelled versions of the GOOGLE Mark further demonstrates Respondent's lack of legitimate rights or interests in the Domain Names.
On information and belief, Respondent is not commonly known as the Domain Names or any name containing Complainant's GOOGLE Mark. Respondent's Whois information in connection with the Domain Names makes no mention of the Domain Names or the GOOGLE Mark as Respondent's name or nickname. A registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name.
Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating a complainant's trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Name.
The Domain Names are examples of typosquatting, a process in which a domain name registrant attempts to register a confusingly similar domain name that differs from a protected mark only slightly by taking advantage of common typing errors.
Respondent also cannot claim that it is offering bona fide goods or services by redirecting at least two of the Domain Names to websites that deceive users who are seeking Complainant's GOOGLE website and services.
Respondent likely derives substantial profits from those Domain Names by enlisting Google's misdirected users in text messaging plans, contests, and other products and services. Moreover, in all likelihood Respondent sells the contact information provided by users in completing the purported survey. As such, Respondent is improperly capitalizing on the GOOGLE Mark, which does not amount to legitimate noncommercial or fair use of the Domain Names.
Moreover, the use of the Domain Names to mimic Complainant's website in order to obtain personal information constitutes "phishing" and is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. The promise of valuable prizes to bait Complainant's misdirected users into signing up for text messaging plans is such a phishing scheme.
The remaining Domain Names resolve to parked pages that have been monetized with sponsored ads. Such use further establishes that Respondent has no legitimate rights or interests in the Domain Names.
Bad faith registration and use
The fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Names, make it extremely unlikely that Respondent created the Domain Names independently.
Moreover, even constructive knowledge of a famous mark like the GOOGLE Mark is sufficient to establish registration in bad faith.
It is impossible to conceive of any potential legitimate use of the Domain Names given their near identity to Complainant's famous GOOGLE Mark and the fact that they are otherwise not real words.
Where a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.
Furthermore, using domain names to obtain a user's personal information, which is likely the purpose of the alleged "survey" available by visiting two of the Domain Names, is evidence of phishing and represents bad faith registration and use. Respondent's efforts to take advantage of misdirected consumers by masquerading as a site affiliated with or sponsored by Complainant (e.g., by greeting users with the message "Congratulations Google User!", telling users that they are "Google Winner[s]!", and using the blue G logo imitating Complainant's prior logo), collecting personal information, and enlisting those users in contests and other schemes, amounts to clear bad faith registration and use.
Respondent's use of many of the remaining Domain Names to generate revenue using pay-per-click advertising also constitutes bad faith use and registration.
Respondent's bad faith is also evidenced by his pattern of conduct in registering infringing domain names. As discussed above, at least five prior panels have found that Respondent registered and used domain names in bad faith and ordered transfer.
Finally, Respondent has failed to respond favorably to Complainant’s efforts to resolve this dispute amicably. Such failure to respond supports a finding of bad faith registration and use of a domain name.
B. Respondent
Same entity
The Domain Name <gongle.com> belongs to clearly a different person and should not be included in this Complaint; the legal registrant of <gongle.com> is Keith Carpenter, he is a long standing friend and costumer of the Respondent and he is and always was the legal owner of the Domain Name <gongle.com>.
We urge the forum to acknowledge this legal fact and dismiss this case for <gongle.com>. The fact also is that a small part of the Whois reflects our information as we take care of our client’s Internet interests. We urge the forum to contact the legal owner of <gongle.com> by calling his phone to verify the legality of this statement.
We intend to take legal action against Google Inc and their legal representatives as we notified them in writing about this conflict.
Confusing similarity
All listed Domain Names are clearly not confusingly similar to the GOOGLE Mark for the simple fact that, as Complainant demonstrated the trademark is so famous that virtually no one, not even an elementary student, ever misspells the domain "Google." Even at the remote chance that someone accidently mistypes the domain name on the keyboard, the mistype would be a letter close to the original letter at the keyboard. For example instead of <google.com>, someone may accidently type <foogle.com>, <hoogle.com>, or <gople.com> (the letter p is next to the letter o).
The Domain Name <gongle.com> clearly has NONE of these characteristics as well as the Domain Name <gogleo.com> which has several different letters and none of the Domain Names in this Complaint are in any way confusingly similar or even remotely similar to <google.com>. The domain <gogleca.com> can in no way be considered similar to <google.com>. Where would one draw the line at similarities as I also own and operate a website <gooze1.com> - it is also not in any way confusingly similar.
Rights and legitimate interest
In the case of <gongle.com>, the Respondent’s client Keith Carpenter owns and operates the website <gangle.com> since Jan. 2004 providing easy to use surveys and is one of the leading and most respected DIY survey websites of its kind worldwide for over 8 years! Our client also has a pending trademark on the term GANGLE.
Acting on the advice of us, our client secured in 2005 the domain name <gongle.com> to protect himself from typosquatting. Fact is, our client, Keith Carpenter, clearly did not register this Domain Name in bad faith and has legitimate right to protect his interest to this domain from typosquatting just as everyone else has.
Bad faith registration and use
The <gongle.com> domain name is clearly used in compliance with Rule 3(b)(ix)(2) as the example survey website demonstrated at his DIY website <gangle.com>. In addition we wish to point out that Complainant does not provide surveys, however <gangle.com> does clearly provide survey information. As for the other Domain Names the Respondent contends that all of the Domain Names are in legitimate use, just as the 1,000's of other websites Respondent operates such as <Bonuses.com>, <eAntiques.com>, <Snuffs.com>, <Cabbages.com>, <Gooze1.com> and many 1,000's more as well as countless U.S. trademarked websites such as EVANGE (<evang.com>), <DreamBooks.com>, and many more. (Please note that all these are legally registered U.S. trademarks).
Reverse domain name hijacking
In addition, Complainant was being made aware of all circumstances surrounding the Domain Name <gongle.com> and the pending trademark for my client for the sister domain <gangle.com> in writing on 2/25/2012. However, all e-mails to the Complainant were ignored! If necessary, we are able to prove this statement with a computer forensic expert. We also reserve the right to take any and all legal action against Google Inc. and their legal representatives as all parties were made aware of our clients pending trademark, but still choose to engage in harassing reverse domain hijacking.
Due to the fact that Complainant did receive notice by mail that Respondent has legal rights to the domains and the fact that Complainant's legal team was informed that there are different domain owners and that <gongle.com> was use legitimately in conjunction with <gangle.com> but they choose to ignore all of Respondents efforts to resolve these issues, Respondent hereby requests and urges that the Panel finds a case of reverse domain hijacking to set an example that even large companies do not have an automatic right to every domain name on the Internet. Respondent was clearly targeted and singled out without any cause.
C. Additional Submissions
Same entity
Respondent claims that <gongle.com> "belongs clearly [to] a different person," but has failed to provide any objective evidence in support of that assertion (such as contracts, invoices, or written correspondence). Instead, the evidence conclusively establishes that <gongle.com> is indeed owned by Respondent and under Respondent's direct control. The Whois for that Domain Name identifies the registrant as "Wolf Internet Services LDC," using the same e-mail address, telephone number, and mailing address that Respondent uses for other
domain names in his portfolio. For example, true and correct Whois records for <dated.biz> and <partial.biz>, reflect the same ownership details as those listed for <gongle.com> (and also listing Wolfgang Sauer as an additional registrant).
Moreover, prior to the filing of this Complaint, <gongle.com> was registered to "W.B. Sauer" with an address consistent with the other Domain Names. Respondent's modification of the Whois record after the Complaint was filed is a deliberate effort at cyberflight to avoid transferring this infringing Domain Name, which is presumably generating considerable revenue for Respondent at the expense of Complainant's users.
Confusing similarity
Contrary to Respondent's assertions, the Domain Names are nearly identical to the GOOGLE Mark, differing by only one or two letters. Respondent's assertion that the GOOGLE Mark is so famous that it will never be mistyped is belied by years of UDRP precedent establishing that the world's most famous brands are regularly beset by typosquatters.
Complainant has described the confusing similarities between each of the Domain Names and the GOOGLE Mark in its Complaint. Respondent, on the other hand, has failed to explain why he adopted the Domain Names or introduce any other evidence that would suggest the Domain Names are not confusingly similar to the GOOGLE Mark.
There is no plausible explanation for Respondent's provision of the content referring to "Google" at the websites reached by use of the Domain Names <gongle.com> and <gogleo.com>, other than that the Domain Names are so confusingly similar to the GOOGLE Mark that Complainant's users are mistakenly entering the Domain Names into their web browsers.
The remaining Domain Names resolve to pay-per-click advertising pages that prominently feature advertisements for Complainant's products and services and those of its competitors, establishing the existence of a clear association between those Domain Names and Complainant. For example, the first link at <gogleca.com> is "Download Google Chrome," with a link to Complainant's own website. The first link at <googlee.com> is "Try Google Music," again with a link to Complainant's own website.
Rights and legitimate interest
Respondent asserts that <gongle.com> was registered in an effort to protect a "client" who has owned and operated <gangle.com> since 2004 from cybersquatting. Respondent's arguments are again belied by the objective evidence. If <gongle.com> were indeed registered defensively, then it would presumably redirect to the website at <gangle.com> rather than a fake survey website targeting Complainant's users. Moreover, the <gangle.com> domain name resolved to a pay-per-click advertising website as of late 2010, and thus has not been used in connection with survey services "for over eight years" as Respondent claims. And until recently, the <gangle.com> domain name was registered to a privacy service, not Respondent.
The Whois record was only updated within the past few weeks to reflect "Keith Carpenter" as the registrant, presumably the result of a deliberate effort by Respondent to create confusion and mislead the Panel.
Respondent has not asserted any arguments regarding legitimate rights or interests in the remaining three Domain Names at issue in this dispute. Respondent presumably concedes that he lacks any legitimate rights or interests in those domains. Respondent has also failed to refute Complainant's argument that he is generating substantial revenue from all of the Domain Names.
Bad faith registration and use
Respondent's bald assertions of good faith do not override the objective and uncontroverted facts in the record clearly demonstrating otherwise.
The factual contentions made by Complainant are for the most part corroborated by documentary evidence in the form of screen shots, lists of recognized and valuable trademarks, Whois records, and lists of trademark registrations.
As far as Respondent is concerned, only certain of its factual contentions relating to use (but not registration) of the domain name <gangle.com> (not in issue in this proceeding) are corroborated by documentary evidence.
The primary factual dispute between the parties deals with the ownership and use of the <gongle.com> Domain Name. Complainant says that Wolfgang Sauer owns this Domain Name[1]. Respondent says that this Domain Name is owned by Keith Carpenter, who is a "long standing friend and customer of Wolfgang Sauer" and who "is and always was the legal owner" of this Domain Name.
As contended by Complainant, the <gongle.com> Domain Name was in the name of "W.B. Sauer" prior to filing of the Complaint. Complainant proves this contention by the submission of the related Whois record.
As contended by Complainant, registered ownership of this Domain Name was transferred to "Wolf Internet Services LDC" and "Keith Carpenter" after the filing of the Complaint. As contended by Respondent, the <gongle.com> Domain Name was secured in 2005 by "our client Keith Carpenter." Respondent submits no evidence to support this contention. Especially notable is the absence of any declaration or affidavit by "Keith Carpenter" or any proof that such an individual exists[2].
Respondent also contends "Keith Carpenter" has used the domain name <gangle.com> "since "Jan. 2004" and has "a pending trademark on the term GANGLE." Respondent submits no evidence to support these contentions.
As contended by Complainant, the <gongle.com> Domain Name and the remaining Domain Names share the same telephone numbers, e-mail addresses, and other contact information, both before and after the post-Complaint transfer. Respondent does not dispute this contention.
Given the foregoing, the Panel finds that the owner and registrant of the <gongle.com> Domain Name is Wolfgang Sauer.
The Panel's remaining factual findings are interwoven in the discussion below.
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: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the Domain Names are controlled by the same entity, Wolfgang Sauer, and thus will proceed with a decision on the Complaint and Response.
Complainant has established rights in the GOOGLE Mark. These rights come from Complainant's U.S. Trademark Registration Nos. 2,806,075 and 2,954,071, and other U.S and foreign registrations, proven by Complainant. These rights also come from the long, extensive, and exclusive use of the GOOGLE Mark in the United States, proven by Complainant.
The Panel finds that the GOOGLE Mark is a famous mark. The extensive evidence of notoriety submitted by Complainant supports the contention that this trademark is very well known. The Panel notes that the GOOGLE Mark is so famous that it is subject to the same type of generic use that once afflicted another very famous mark, XEROX. Then (and perhaps now), the public often spoke and wrote of making a "xerox" copy. Today, the public often speaks and writes of "googling" a subject. Other panels have found that the GOOGLE Mark is famous (an example is Google Inc. v. Mikel M Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) ("Respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s mark is so well known."). And, Respondent concedes the fame of the GOOGLE Mark in its own defense.
The Domain Names are confusingly similar to the GOOGLE Mark. All appear to be misspellings of that mark: <gongle.com> differs by one letter (an "n" substituted for an "o")"; <gogleca.com> deletes one letter (an "o") and adds the generic abbreviation "ca"; <gogleo.com> moves one letter (an "o") from the middle to the end; <googglee.com> duplicates in succession two letters (a "g" and "e"). And, the addition of the top level domain ".com" cannot distinguish the Domain Names from the GOOGLE Mark. See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Interesting is Respondent's contention that confusing similarity is avoided by the very fame of the GOOGLE Mark. This argument is that the misspellings could not have occurred because "virtually no one, not even an elementary student ever misspells" the mark. This argument is ridiculous, because anyone who has ever used a keyboard, and especially elementary students, makes frequent and repeated typing errors.
Another creative argument by Respondent is that the misspellings would not usually occur because a user would not accidentally type the different letters because they are not next to the letters of the GOOGLE Mark. Perhaps Respondent is trying to establish that the circumstances are different from those in Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark).
The possibility that a user wouldn't accidentally hit the wrong key (as might be the case with the <gongle.com>, <gogleca.com>, and <gogleca.com> Domain Names) doesn't prove an absence of confusing similarity. Confusion occurs in the mind, not the fingers. It is the overall impression that the user receives upon comparing the GOOGLE Mark with the Domain Names. That impression, in every instance, is the same - the Domain Names are clever alterations of the GOOGLE Mark that will confuse.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
Respondent has offered and is offering services in which prizes are offered through websites using the <gongle.com> and <gogleo.com> Domain Names, in exchange for information provided to users. Respondent began such offering after Complainant established rights in the GOOGLE Mark. Those services are within the scope of or closely-related to the services for which Complainant has secured rights in the GOOGLE Mark.
Respondent has offered and is offering pay-per-click advertising of various goods and services at websites using the <gogleca.com> and <googllee.com> Domain Names. These services are related to the services for which Complainant has secured rights in the GOOGLE Mark.
Complainant has not authorized Respondent to use the Domain Names.
Use of the Domain Names thus is an infringement of Complainant's rights in the GOOGLE Mark.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial 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.
In the Panel's opinion, the circumstances of paragraph 4(c) are for Respondent to prove, not for Complainant to disprove. Prior UDRP decisions opine, however, that the complainant should make a prima facie showing that the respondent does not come under those circumstances. 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.”).
Complainant has made such a prima facie case. Respondent's use of the Domain Names (being an infringement) is not bona fide, Respondent's name is not the Domain Names, and Respondent's use of the Domain Names is for commercial gain.
Respondent says nothing in its defense regarding the <gogle.ca.com>, <gogle.com>, and <googglee.com> Domain Names.
Regarding the <gongle.com> Domain Name, Respondent says that its client "Keith Carpenter owns and operates a website <gangle.com>" and registered that Domain Name "to protect himself from typosquatting." Respondent has not proven that "Keith Carpenter" owns the domain name <gangle.com>. Rather, the initial ownership of the <gangle.com> domain name is shrouded in secrecy, as reflected by the Whois record submitted by Complainant that identifies the registrant as "Whois Privacy Protection Service, Inc." And, Respondent has not proven that "Keith Carpenter" exists. Any contentions based on the domain name <gangle.com> are immaterial and irrelevant to the rights and legitimate interest of Respondent.
Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
Complainant has established the circumstances of paragraphs 4(b)(ii), (iii), and (iv).
Regarding registration of the Domain Names, the fame of the GOOGLE Mark (undisputed by Respondent) makes it certain that Respondent knew of the GOOGLE Mark prior to such registration. Given that knowledge, Respondent's proven pattern of engaging in past Policy violations allows the inference to be readily drawn that Respondent registered the Domain Names to prevent them from being registered or used by Complainant. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Respondent's reference to "Keith Carpenter" is immaterial and irrelevant to this finding of bad faith registration, for the reasons previously discussed with respect to rights and legitimate interest.
Regarding use of the <gongle.com> and <gogleo.com> Domain Names, Respondent is engaged in a phishing scheme, in which users are directed to websites that welcome the user as a "Google User" and a "Google Winner[s]" and use a logo emulating a prior logo of Complainant. This phishing scheme both diverts business from Complainant to Respondent, and takes commercial advantage of users' mistakes by causing confusion. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Regarding use of the <gongle.com> Domain Name, Respondent cannot rely on the supposed "Keith Carpenter" or his supposed business, for the reasons previously discussed by the Panel.
Regarding use of the <gogleca.com> and <googllee.com> Domain Names, Respondent is engaged in a commercial use of those Domain Names at websites at which users see parking pages and are given the opportunity to go to other websites. The parking page at <gogleca.com> includes "sponsored listings," one of which offers a link to "Download Google Chrome." The parking page at <googlee.com> also includes "sponsored listings," one of which offers a link to "Try Google Music." The use of such parking pages with competitive and noncompetitive links has been held to be evidence of bad faith use. See Google Inc. v. Forum LLC, FA 1053323 (Nat. Arb. Forum Oct. 7, 2007) (finding bad faith registration and use where <googlenews.com> "resolves to a commercial search engine website" generating "clickthrough advertising fees"); REO Speedwagon, Inc. v. Domain Administrator, FA 910799 (Nat. Arb. Forum Mar. 23, 2007) (finding bad faith use and registration where domain name used to attract Internet users to generate "per click" revenue); State Farm Mut. Auto. Ins. Co. v. Haan, FA 948470 (Nat'l Arb. Forum May 9, 2007) ("The Panel finds that appropriating another's mark to provide links to competitors is evidence of bad faith registration and use" where the domain name resolved to a "parked" page provided by the registrar for the domain name). And, the unauthorized and implied reference to Complainant as providing a "sponsored listing" is evidence of Respondent's fraud. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
REVERSE DOMAIN NAME HIJACKING
The Panel has found that Complainant has satisfied all three elements of the Policy. No consideration needs to be given to Respondent's claim, which requires that Respondent prove that Complainant acted in bad faith in the proceeding. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003); Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gongle.com>, <gogleca.com>, <gogleo.com>, and <googglee.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: April 17, 2012
[1] Respondent does not dispute Complainant's contention that the remaining Domain Names are owned by Wolfgang Sauer in that name or in the name of "W.B. Sauer."
[2] Respondent does not dispute Complainant's contention that "Wolf Internet Services LDC" is Wolfgang Sauer.
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