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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Jeltes Consulting / N. Tea Pty Ltd.

Case No. D2008-0994

 

1. The Parties

The Complainant is Google Inc., of California, United States of America, represented by Middletons Lawyers of Melbourne, Victoria, Australia.

The Respondent is Jeltes Consulting / N. Tea Pty Ltd., of Australia, represented by Jan Jeltes, of Eden Hills, Australia.

 

2. The Domain Names and Registrars

The disputed domain names

<businessgoogler.com>

<cargoogler.com>

<casinogoogler.com>

<collectiblesgoogler.com>

<cvgoogler.com>

<domaingoogler.com>

<foodgoogler.com>

<franchisegoogler.com>

<fungoogler.com>

<googlegoogler.com>

<grocerygoogler.com>

<linkgoogler.com>

<lyricsgoogler.com>

<mp3googler.com>

<newsgoogler.com>

<porngoogler.com>

<propertygoogler.com>

<realestategoogler.com>

<supplygoogler.com>

<travelgoogler.com>

<winegoogler.com> and

<888googler.com>

are registered with Wild West Domains, Inc. (“Wild West Domains”).

The disputed domain names <loangoogler.com>, <sportsgoogler.com> and <auctiongoogler.com> are registered with Melbourne IT trading as Internet Names Worldwide (“Melbourne IT”).

The disputed domain name <adgoogler.com> is registered with GoDaddy.com, Inc. (“GoDaddy”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 1, 2008, and in hardcopy the following day. The Respondent confirmed by email on July 1, 2008, that he had received a copy of the Complaint and provided his preferred contact details, pointing out that the company N. Tea Pty Ltd was now defunct. The Center transmitted its requests for registrar verification to Wild West Domains, Melbourne IT and GoDaddy by email on July 2, 2008.

Wild West Domains responded by email on July 2, 2008, stating that it had received a copy of the Complaint; that it was the registrar of 22 of the disputed domain names, as listed above; that Jeltes Consulting was the registrant of these domain names; that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to these registrations; that these domain names would remain locked during this proceeding; and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction at the location of its principal office for court adjudication of disputes arising from the use of the domain names; and providing the contact details in respect of the relevant registrations on its database.

Melbourne IT responded by email on July 3, 2008, stating that it had received a copy of the Complaint; that it was the registrar of three of the disputed domain names, as listed above; that the respondent was the registrant of these domain names; that the Policy applied to these registrations; that these domain names would remain locked during this proceeding; and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction of the courts as provided in the Policy; and providing the contact details in respect of the relevant registrations on its database.

Go Daddy responded by email on July 2, 2008, stating that it had received a copy of the Complaint; that it was the registrar of the last disputed domain name listed above; that the respondent, Jeltes Consulting, was the registrant of this domain name; that the Policy applied to the registration; that the domain name would remain locked during this proceeding, but the lock would expire on expiration of the registration; and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction at the location of its principal office for court adjudication of disputes arising from the use of the domain name; and providing the contact details in respect of the registration on its database.

Wild West Domains further confirmed by email of July 3, 2008, that the disputed domain names

<businessgoogler.com>

<casinogoogler.com>

<cvgoogler.com>

<franchisegoogler.com>

<supplygoogler.com> and

<888googler.com>

had expired, but that they were not available for registration at this time. The Center so informed the parties and invited them to contact Wild West Domains directly concerning their renewal.

The Center notified the Complainant by email of July 4, 2008, that the Complaint was administratively deficient in that the correct fee had not been paid, the registrar Wild West Domains had not been correctly identified, and the mutual jurisdiction submission was not in the correct form. The Complainant filed an amended Complaint addressing these deficiencies on July 7, 2008.

The Center verified the following day that the amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 28, 2008. The Response was filed with the Center by email on July 16 and 17, 2008 and in hardcopy on July 24, 2008.

The Center appointed Jonathan Turner as the sole panelist in this matter on August 6, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant provides the world’s leading Internet search engine under the brand “Google”. It has over 60% of the market in worldwide searches and its revenues in 2007 exceeded US $16 billion. It has registered GOOGLE as a trademark in Australia with a priority date of September 16, 1998.

The Respondent registered the disputed domain names at various dates from 2003 onwards. He wrote to the “Vice President, Corporate Marketing” of the Complainant on December 1, 2003, referring to an article in Fortune magazine which he said noted that the term “Googling” had become a verb in common vernacular. The letter went on to say that in recognition of the common use of the term “Googling”, the Respondent’s company had registered five domain names incorporating “googler”, as listed in the letter. (Three of these are included in the present Complaint.) The Respondent recognised that the Complainant might consider this an infringement of its rights and requested the Complainant’s view on it. He added that if the Complainant believed that there was an opportunity for joint effort, he would be willing to explore this.

The Complainant did not reply to this letter. However, on August 2, 2004, the Complainant’s senior trademark counsel sent a cease and desist letter to the Respondent by email, referring to a large number of domain names which he had registered incorporating “googler”. The Respondent replied the following day, stating that he had communicated his intention to secure these domain names to the Complainant’s executives and the Complainant had not responded, that the term “Googler” was now in the common vernacular, and that due to these factors he considered that he did not need to comply with the Complainant’s notice.

The Complainant responded on August 19, 2004, stating that it had no record of the Respondent’s earlier letter, that if he had not received the Complainant’s permission his use was unauthorised, and that the Complainant strongly disputed the assertion that Google is in the common vernacular. Following a chasing email on September 14, 2004, the Respondent replied on September 15, 2004, criticising the Complainant for adopting a confrontational approach, reiterating his willingness to defend his position and proposing a constructive discussion. The letter went on to say that the Respondent would not consider a simple transfer of the domain names without any consideration, but that he would be most happy to discuss options that might lead to the transfer of some or all of the Googler domain names to the Complainant for safe keeping, and that he was receptive to any suggestions that the Complainant cared to make.

The Complainant reverted on March 25, 2005, alleging that the Respondent was using the domain names in bad faith to direct traffic to his commercial website, that the Policy applied and that the Complainant was confident of succeeding if it were to file a complaint under the Policy. The letter went on to say that the Respondent’s attempt to obtain “consideration” from the Complainant in exchange for transfer of the domain names was further evidence of bad faith. The Respondent replied acknowledging that he had offered for the Complainant to purchase the domain names, but rejecting the inference drawn by the Complainant and reiterating his position.

The Complainant’s representatives sent a further cease and desist letter to the Respondent on January 10, 2007. The Respondent replied on January 26, 2007, stating that if the Complainant provided a sound and verifiable legal basis for its claims, he would transfer the domain names incorporating “googler” free of charge. A further letter of the Respondent of May 24, 2007, repeated “one final time” his offer to consider a “commercially realistic offer”.

The Respondent made applications to register “Googler” as a trademark in Australia on December 2, 2003 and September 28, 2006, but these applications have lapsed. He made a further such application on July 1, 2008.

As at May 7, 2008, the disputed domain names

<foodgoogler.com>

<linkgoogler.com>

<grocerygoogler.com>

<porngoogler.com>

<newsgoogler.com>

<lyricsgoogler.com>

<travelgoogler.com>

<realestategoogler.com>

<fungoogler.com>

<mp3googler.com>

<adgoogler.com>

<loangoogler.com>

<sportsgoogler.com>

<cargoogler.com> and

<winegoogler.com>

<franchisegoogler.com>

<cvgoogler.com>

<businessgoogler.com>

<supplygoogler.com>

<googlegoogler.com> and

<collectiblesgoogler.com>

all redirected to a website at “www.googler.com.au” which is devoted to a weblog by the Respondent commenting predominantly on international and Australian news.

The disputed domain names <propertygoogler.com> and <auctiongoogler.com> resolved to websites appearing or proposing to offer commercial services related to the sale of property and auctions respectively.

The disputed domain name <domaingoogler.com> resolved to a site which currently offers for sale “linkgoogler.com” and “mp3googler.com” as well as several other domain names which are not the subject of this Complaint.

The disputed domain names <casinogoogler.com>, <888googler.com> did not resolve to any online location and returned a “server error” message when entered into a browser.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the mark GOOGLE in which it has rights by virtue of its registration as a trademark in Australia and its reputation. The Complainant points out that the disputed domain names generally comprise a descriptive noun and “googler”. According to the Complainant, Internet users would expect the disputed domain names to belong to the Complainant and to be used by the Complainant to provide Internet searches focusing on the field indicated by the descriptive noun. The Complainant draws attention to the Respondent’s proposed use of the domain name <propertygoogler.com> to enable Internet users to search for properties for sale, which it considers would increase the likelihood of confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It submits that the Respondent is not making a legitimate fair use of them, stating that 13 (in fact 21) of them are linked to the Respondent’s “www.googler.com.au” weblog site and that only three of them are used to host their own websites. It draws particular attention to the fact that the website at “www.domaingoogler.com” offered domain names for sale including two of the disputed domain names for over $12,000 each. It alleges that it is likely that the Respondent intends to sell the other disputed domain names, since they are not being used to host individual websites, with the exception of two which host websites under construction.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. It relies in particular on the offer for sale of two of the disputed domain names at “www.domaingoogler.com” and the indications given by the Respondent in correspondence with the Complainant and its representatives that he was seeking a “commercially realistic offer”.

The Complainant requests a decision that each of the disputed domain names be transferred to it.

B. Respondent

As a general point, the Respondent contends that the Complainant has failed to meet its burden of proof by supporting its Complaint with statistically and otherwise significant evidence. According to the Respondent, the Complainant offers little more than idle speculation cleverly constructed to shift the burden of proof from the Complainant to the Respondent.

The Respondent alleges that “google” is in common use as a generic verb to describe making an Internet search, referring to three dictionary entries, and that “googler” accordingly describes someone who carries out Internet searches. He also claims that “googler” is used to describe a person who bowls a googly in the game of cricket. He further refers to a cartoon character, “Barney Google”, and a children’s entertainment website at “www.googles.com” which predated the Complainant’s adoption of the name “Google”.

The Respondent contends that the disputed domain names are not deceptively similar to the Complainant’s mark, GOOGLE. He notes that there is no evidence of anyone having been confused despite his longstanding use of several of the disputed domain names. He points out that the addition of “r” to a mark does not necessarily create a word associated with the mark. He states that the website at “www.propertygoogler.com” is for research purposes only and that he has no intention of using it to provide search engine services.

The Respondent asserts that he has rights or legitimate interests in the disputed domain names by virtue of his use of them for collecting, analyzing and manipulating data for the purpose of research into Internet user behaviour and search engine evolution. He submits that this is fair use. He denies that any of the disputed domain names are for sale, and states that if that were his intention, he would not have allowed a number of similar domain names to lapse.

The Respondent further contends that he registered and is using the disputed domain names in good faith for research as summarized above. He emphasizes that he contacted the Complainant on December 1, 2003, to ascertain its perspective, and subsequently offered to transfer the disputed domain names free of charge if the Complainant provided verifiable evidence to substantiate its contentions. He denies any intent to mislead or confuse consumers and observes that there has not been a single instance of misunderstanding in the last five years. He reiterates that he had and has no intention of selling any of the disputed domain names.

The Respondent requests the Panel to deny the remedies requested by the Complainant and to consider whether reverse domain name hijacking is taking place.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the disputed domain names are identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Each of these requirements will be considered in turn below.

A. Identical or Confusingly Similar to a Mark in which the Complainant has Rights

The Panel is satisfied that the Complainant has rights in the mark GOOGLE. The Panel considers that the mark remains distinctive of the Complainant, despite the evidence of some generic use reflected in the entries in two of the dictionaries cited by the Respondent. Furthermore, the mark is registered in Australia and the registration should be presumed valid unless the contrary is shown: see Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645.

The Panel also finds that all of the disputed domain names are confusingly similar to the mark GOOGLE. Even if some Internet users might regard “googler” as a descriptive reference, the Panel considers that many would assume that in the context of the disputed domain names “googler” identifies websites of the Complainant. In particular, in the view of the Panel, many Internet users would assume that the disputed domain names identify websites provided by the Complainant for those wishing to carry out Internet searches focusing on the field indicated by the descriptive term which they comprise together with “googler” and the generic top level domain suffix.

This view is consistent with the dictionary entries relied on by the Respondent, which give the following meanings for “google”:

“verb [intrans.] use an Internet search engine, particularly Google.com … [trans.] search for the name of (someone) on the Internet to find out information about them”;

“vb 1 to search for (something on the Internet) using a search engine. 2 to check (the credentials of someone) by searching for websites containing his or her name”;

“transitive verb …. to use the Google search engine to obtain information about (as a person) on the World Wide Web”.

These entries indicate that “google” is used as a verb to refer in particular to conducting an Internet search using the Complainant’s search engine. It follows from this that “googler” would frequently be taken as referring to a person who carries out Internet searches using the Complainant’s search engine, in line with common English usage of the suffix “r” or “er” with a verb root.

The Panel regards any suggestion that Internet users would associate the disputed domain names with cricket or the cartoon character “Barney Google” as far-fetched. Nor is the Panel impressed by the Respondent’s assertion that there is no evidence of any confusion to date. It is often difficult and/or expensive to find such evidence. The purpose of the Policy and the Rules is to provide a relatively inexpensive procedure for determining certain types of domain name dispute. This procedure relies on the experience and common-sense of panelists in assessing whether a domain name is confusingly similar to a complainant’s mark, and parties are not required to conduct disputes under the Policy as if they were major commercial litigation.

While Internet users would normally realize on accessing the Respondent’s websites that they are not in fact provided by the Complainant, it is well-established that this does not avoid a finding of confusing similarity within the meaning of the first requirement of the Policy. On the contrary, the comparison to be made under this requirement is between the disputed domain names and the mark, disregarding the content of the websites: see General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334.

The Panel finds that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy identifies, without limitation, various circumstances which, if found by the panel to be proved based on its evaluation of all the evidence presented, shall be taken to demonstrate a respondent’s right or legitimate interest in a domain name. It is convenient to consider first whether any of these circumstances are present in this case.

The Respondent asserts that he has used and invested in the disputed domain names for “collecting, analysing and manipulating data for the purpose of Research into Internet User Behaviour and Search Engine Evolution”. However, he has not provided any evidence of such research. On its evaluation of all the evidence, the Panel considers that the Respondent has not established that he has used or made demonstrable preparations to use the disputed domain names for this purpose, so as to be able to invoke paragraph 4(c)(i) of the Policy, even if this purpose could be said to be a bona fide offering of goods or services.

In any case, even if such use had been established, the Panel would not regard it as a bona fide offering of goods or services. It has been accepted in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and other panel decisions that commercial use of a domain name incorporating a mark exclusively to identify the goods or services of the owner of the mark can be bona fide so as to give rise to rights or legitimate interests within the meaning of this requirement of the Policy, provided certain conditions are met. However, the Respondent has not suggested that he is using the disputed domain names exclusively to identify the goods or services of the Complainant. On the contrary his stance is that “googler” is generic. It may fairly be presumed that any actual or intended use by him of the disputed domain names for this purpose would not be restricted to the Complainant’s search engine. Such unrestricted use by the Respondent would take unfair advantage of the reputation of the Complainant’s mark to further commercial research into its competitors.

It is clear that the Respondent’s actual or threatened use of the disputed domain names <propertygoogler.com>, <domaingoogler.com> and <auctiongoogler.com> for the sale of property and domain names and for the promotion of auctions cannot be regarded as a bona fide offering of goods or services. On the contrary, this constitutes use in bad faith to attract Internet users for commercial gain to the Respondent’s websites through confusion with the Complainant’s mark.

There is no basis for supposing that the Respondent is commonly known by the disputed domain names so as to bring paragraph 4(c)(ii) of the Policy into play.

The Respondent claims that his use of the disputed domain names has been for commercial purposes and that he “intends to register a Private Company limited by Shares upon successful registration to capitalise on the interim results of his research”. Accordingly, the Respondent cannot contend that he is making legitimate non-commercial use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.

Furthermore, the Panel does not regard the Respondent’s weblog as a legitimate or fair use of the disputed domain names. It has been accepted in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947, and other decisions, that bona fide use of a domain name incorporating a mark in order to identify the owner of the mark, for example for a website devoted to good faith criticism of the owner of the mark, can be legitimate and fair for this purpose, provided certain conditions are met. However, in this case the Respondent’s weblog is not about the Complainant. It is about news in general. It is not legitimate or fair to use a mark without its owner’s consent to take advantage of its reputation to promote a weblog which does not qualify as good faith criticism of the owner of the mark.

Having reviewed all of the evidence, the Panel does not see any other basis on which the Respondent might be said to have rights or legitimate interests in the disputed domain names. The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

It is clear that the Respondent has offered some of the disputed domain names for sale at prices substantially in excess of their cost of acquisition. In the circumstances, including the absence of any use other than to redirect to the Respondent’s weblog site, the Panel finds that these disputed domain names were registered primarily for this purpose. In view of the common features of the disputed domain names, it is reasonable to infer that the other disputed domain names were registered and are being used with a similar intent. This conclusion is reinforced by the correspondence in which the Respondent invited the Complainant to make a “commercially realistic offer” for all of the disputed domain names in various different guises. In accordance with paragraph 4(b)(i) of the Policy, this constitutes evidence of registration and use in bad faith.

The Panel further finds that the Respondent has used or threatened to use the disputed domain names <propertygoogler.com>, <domaingoogler.com> and <auctiongoogler.com> in order to attract Internet users for commercial gain to his websites through confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of these websites. In accordance with paragraph 4(b)(iv) of the Policy, this also constitutes evidence of registration and use in bad faith. Again, it is reasonable to infer that the other disputed domain names were registered with a similar intent and thus in bad faith.

The Panel considers that the use of most of the disputed domain names to redirect to the Respondent’s weblog site is also in bad faith. Even if the Respondent derives no immediate commercial benefit, he is still taking unfair advantage of the reputation of the Complainant’s mark to divert Internet users to his website through confusion.

The fact that the Respondent wrote to the Complainant on December 1, 2003, informing it that he had registered some of the disputed domain names, and that the Complainant did not reply to this letter, does not avoid a finding of bad faith on the part of the Respondent. It is clear that the Respondent was well aware of the Complainant’s mark and the possibility that the Complainant might object to this use of it. It is also clear that the Complainant did not give the Respondent any permission to register or use the disputed domain names and, on the contrary, objected thereto in a series of letters from August 2004 onwards.

Informing a trademark owner of a bad faith registration of a domain name does not make its registration or use in good faith. On the contrary, it is very often an opening gambit in an exercise of inducing the trademark owner to offer to buy the domain name without providing direct evidence to support a complaint under the Policy. Trademark owners are entitled to ignore such letters, rather than waste time and incur expense in replying to them, particularly as a reply may encourage the registrant to believe that the trademark owner will pay more rather than less to secure the domain name in question.

The Panel concludes that the third requirement of the Policy is satisfied.

D. Reverse Domain Name Hijacking

Since the Panel has found in favour of the Complainant, the question of Reverse Domain Name Hijacking does not arise.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names

<businessgoogler.com>

<cargoogler.com>

<casinogoogler.com>

<collectiblesgoogler.com>

<cvgoogler.com>

<domaingoogler.com>

<foodgoogler.com>

<franchisegoogler.com>

<fungoogler.com>

<googlegoogler.com>

<grocerygoogler.com>

<linkgoogler.com>

<lyricsgoogler.com>

<mp3googler.com>

<newsgoogler.com>

<porngoogler.com>

<propertygoogler.com>

<realestategoogler.com>

<supplygoogler.com>

<travelgoogler.com>

<winegoogler.com>

<888googler.com>

<loangoogler.com>

<sportsgoogler.com>

<auctiongoogler.com> and

<adgoogler.com>

be transferred to the Complainant.

---

Jonathan Turner
Sole Panelist

Dated: August 20, 2008