Google Inc. v. Andrey Korotkov
Claim Number: FA1209001463221
Complainant is Google Inc. (“Complainant”), represented by Kathlyn Querubin of Cooley LLP, California, USA. Respondent is Andrey Korotkov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woogle.com>, registered with DOMAIN.COM, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2012; the National Arbitration Forum received payment on September 19, 2012.
On September 19, 2012, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <woogle.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@woogle.com. Also on September 19, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual grounds.
A. Google and the GOOGLE Mark
10. Google is a Delaware corporation located in Mountain View, California.
11. The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the GOOGLE search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at http://google.com, and Google owns and operates hundreds of additional GOOGLE- formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE Mark.
12. The GOOGLE search engine maintains one of the world’s largest collections of searchable documents. The GOOGLE 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.
13. The GOOGLE Mark was found to be one of the top ten Best Global Brands in each of the last three years. Additionally, Google’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 Name. comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004.
14. Google has consistently been honored for its technology and its services, and has received numerous industry awards.
15. Google also offers co-branded web search solutions and has hundreds of thousands of publishers in its content network.
16. In addition to being accessible from desktop PCs, Google’s adaptable, highly scalable search technology can also be accessed from most mobile and wireless platforms.
17. Google also offers a wide range of products and services beyond search. A full list of available products and services can be found at http://www.google.com/intl/en/options/.
18. The GOOGLE Mark identifies Google’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 Google. 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.
19. Google filed its first United States federal trademark application for the GOOGLE Mark on September 16, 1998. As reflected in Google’s trademark registrations and affirmed by Google’s officers in filings made to the U.S. Patent & Trademark Office under penalty of perjury, Google has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997 and in connection with other products and services since early 1999.
B. Respondent and the Domain Name
20. According to the WHOIS database, Respondent is an individual located in Russia.
21. Respondent registered the Domain Name on April 14, 2002.
22. The Domain Name resolves to a webpage containing thumbnail-sized photos, most of which feature adult content or are sexually suggestive in nature, as well as links with titles such as “Girls Hope you Know Their 7 Darkest Desires” and “Learning This Trick You Will Get Any Girl You Want.”
23. On August 7, 2012 and August 15, 2012, Google emailed Respondent in an effort to resolve this dispute amicably and have the Domain Name transferred to Google. Respondent has not responded to Google’s correspondence.
V. LEGAL GROUNDS
This Complaint is based on the following legal grounds.
A. Likelihood of Confusion—ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
24. Google began using the GOOGLE Mark in U.S. commerce years prior to the registration date for the Domain Name, and owned common law rights in the GOOGLE Mark at the time the Domain Name was initially registered. The manner in which Google used the GOOGLE Mark in connection with its search engine services, as well as the wide-spread media attention generated by this use, are sufficient to establish common law rights in the GOOGLE Mark as early as 1997. See Trendwest Resorts, Inc. v. Tisdel, D2001-0987 (WIPO Oct. 24, 2001) (“The Policy does not require a service mark to be registered by a governmental authority for the Complainant to have rights in the mark. Complainant may have established common law rights in the mark prior to Respondent’s domain name registration.”).
25. Moreover, Google filed its first application for the GOOGLE Mark in the United States on September 16, 1998, and has affirmed under penalty of perjury that the GOOGLE Mark was used in U.S. commerce since 1997. Google now owns several U.S. registrations and foreign registrations for the GOOGLE Mark, each of which remains valid and in full force. Thus, Complainant owns rights in the GOOGLE Mark that predate the registration date of the Domain Name. See, e.g., Pirelli & C. S.p.A. v. Parisa Tabriz, FA921798 (Nat. Arb. Forum April 12, 2007); FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (“[T]he FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark.”); Google Inc. v. Smith Smithers, FA0610000826563 (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.”).
26. A domain name is confusingly similar to a complainant’s mark where it merely interchanges or replaces letters in order to create confusion. See Urtici Kargo Servisi A.S. v. Yurticikargo Yurticikargo, D2003-0707 (WIPO Oct. 24, 2003). In registering the WOOGLE.COM domain name, Respondent has merely replaced a “W” for the “G” in the famous GOOGLE Mark. This edit does not create a recognized term, and is likely intended to take advantage of users who intend to go to Google’s website but mistakenly type the address on the address bar. As a result the Domain Name is confusingly similar to the GOOGLE Mark. See Victoria’s Secret v. Zuccarini, FA0010000095762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters to words did not create a distinct mark and rendered domain names confusingly similar to Complainant’s marks); DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, D2000-1272 (WIPO Dec. 19, 2000) (“The registration of the domain name[] appears to serve no other purpose other than to capture the user who mistakenly or inadvertently enters an incorrectly spelled version of the Complainant’s registered trademark when he or she is attempting to access the Complainant’s web-site.”).
27. As such, the Domain Name is nearly identical and confusingly similar to the GOOGLE Mark.
B. No Rights or Legitimate Interests—ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
28. As Panels have noted in evaluating infringing GOOGLE-formative domains, 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). Complainant has not authorized Respondent to register or use the Domain Name.
29. On information and belief, Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark. Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the 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. See Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Nat. Arb. Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
30. 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. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).
31. The Domain Name is also an example 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.” Time Warner Inc. v. Zone MP3, FA0706001008035 (Nat. Arb. Forum July 25, 2007). The “practice of typosquatting demonstrates a lack of rights or legitimate interests pursuant to Policy ¶4(a)(ii).” Id. Accord IndyMac Bank F.S.B. v. Ebeyer, FA0307000175292 (Nat. Arb. Forum Sept. 19, 2003) (finding respondent lacked rights and legitimate interests in disputed domain names due to his addition of mere typographical errors to the domain names).
32. Thus, Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith—ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
33. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name in bad faith. The fame and unique qualities of the GOOGLE Mark, which was adopted and used in U.S. commerce by Complainant years prior to the registration of the Domain Name, make it extremely unlikely that Respondent created the Domain Name independently. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (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”).
34. Moreover, even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith. Google v. Abercrombie 1, FA0111000101579 (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 googld.com].”).
35. Given Respondent’s registration of a domain name that consists almost entirely of Complainant’s famous GOOGLE Mark, it is impossible to conceive of any potential legitimate use of the Domain Name. As such, the Domain Name is being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark . . . Respondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”); Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May 31, 2004) (finding that registrant’s “passive use” amounted to bad faith use due to the fame of the complainant’s mark and lack of evidence of any good faith); Gaggia S.p.A. v. Kliang, D2003-0982 (WIPO Feb. 8, 2004) (finding bad faith use where the domain name included complainant’s well known trademark, the domain name was inactive for a period of four years, and the registrant failed to respond to complainant’s efforts to resolve the dispute amicably); Staples, Inc. v. Conrad, D2003-0713 (WIPO Oct. 27, 2003).
36. 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.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used . . . its domain names for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
37. Moreover, “registration and use of a domain name that differs from Complainant’s mark by only one letter indicates “typosquatting”, which is evidence of bad faith registration and use.” Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003). Noted above, here Respondent merely replaced a “W” for the “G” in Complainant’s famous GOOGLE Mark, thereby capitalizing on consumer confusion and constituting bad faith registration and use. See also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002- 1011 (WIPO Jan. 21, 2003) (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
38. Finally, Respondent has failed to respond favorably to Google’s efforts to resolve this dispute amicably. Such failure to respond supports a finding of bad faith registration and use of a domain name. See, e.g., Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
39. Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent not 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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the GOOGLE mark through its various trademark registrations around the world including with the following:
USPTO (e.g., Reg. No. 2,884,502 filed Sept. 16, 1998; registered Sept. 14, 2004); and
SAIC (e.g., Reg. No. 1,473,896 registered Nov. 14, 2000).
This Panel concurs and finds Complainant has adequately established its rights in the GOOGLE mark under Policy ¶4(a)(i) through its array of trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues Respondent’s <woogle.com> domain name is confusingly similar to Complainant’s mark, merely replacing the letter “g” of the GOOGLE mark with the letter “w.” The Panel notes the disputed domain name also adds the generic top-level domain (“gTLD”) “.com”, as must every domain name. While changing a single letter is often not enough to differentiate a mark from a domain name, in this case the letter at issue is the first letter. This Panel does not believe Respondent’s disputed domain name can be confused with Complainant’s mark.
Therefore, the Panel declines to find Respondent’s <woogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known by the disputed domain name or any other name containing the GOOGLE mark. Complainant is correct and the Panel finds the WHOIS information supplies no support for a finding that Respondent is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Andrey Korotkov.” Complainant has not licensed Respondent to use the mark. The Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii) based upon the available record. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contended under its “Respondent and the Domain Name” section, that Respondent’s disputed domain name resolves to a website containing thumbnail-sized photographs, most of which are adult content or are sexually suggestive in nature in nature. However, Complainant does not present this argument under either Policy ¶4(a)(ii) or Policy ¶4(a)(iii). The pictures contained on the resolving website cover a wide range of topics (although a number are sexually suggestive in a “G rated” sort of way), and Complainant does not provide evidence of where the picture link upon being clicked. There is no obvious text indicting what the pictures represent. Respondent has provided no indication of what the web site is being used for. In the absence of better information and taking consideration of the fact the disputed domain name was registered on 2002, the Panel finds such use is evidence Respondent is not using the disputed 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). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
Complainant claims the disputed domain name is an example of typosquatting which demonstrates a lack of rights or legitimate interests. Complainant suggests consumers will be confused. UDRP ¶4(b)(iv) provides:
“by using the domain name, you [respondent] 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.”
Complainant has not shown (or even claimed) Respondent is attempting to attract Internet users to capitalize on this confusion. This is not one of the ways to prove Respondent has no rights, but to prove bad faith.
The Panel respectfully disagrees with Complainant about typosquatting. Typosquatting (without more) does not appear in the UDRP as a ground for transferring or cancelling a domain name. Even if typosquatting were in the UDRP, it is difficult to see how one could type WOOGLE when one meant to type GOOGLE.
The Panel finds Policy ¶4(a)(ii) satisfied, although just barely.
Complainant argues Respondent had actual and constructive knowledge of the GOOGLE mark. In light of the fame of Complainant’s mark, the Panel agrees. Complainant obtained its rights before Respondent registered the disputed domain name, making Complainant’s rights first in time.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <woogle.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 31, 2012
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