Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Sudam Chakraborty

Case No. D2009-0030

1. The Parties

The Complainant is Google Inc. of California, United States of America, represented by Ranjan Narula Associates of Gurgaon, National Capital Region, Haryana, India.

The Respondent is Sudam Chakraborty of Kolkata, India.

2. The Domain Name and Registrar

The disputed domain name <googlehrd.com> is registered with Ascio Technologies Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2009. On January 13, 2009, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On January 13, 2009, Ascio Technologies Inc. transmitted by email to the Center its verification response. The Center sent an email communication to the Complainant on January 21, 2009, providing the relevant contact details for the registrant and registrar, and asked the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 22, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on February 17, 2009.

The Center appointed Mr. Christian Schalk as the sole panelist in this matter on February 26, 2009. The Panel finds that it was properly constituted. 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.

The Panel has reviewed the record and confirms the Complainant`s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

4. Factual Background

The Complainant was founded in 1997 and is one of the world`s largest Internet companies. According to a web traffic ranking company, the Complainant`s primary website "www.google.com" is one of the world`s largest search engines indexing more than 8 billion pages and owning more than 60% of the market share in worldwide searches. It is the number one search engine in countries such as Argentina, Australia, Canada, France, Germany, India, Italy, Spain, Sweden, the United Kingdom and the United States. The Complainant has also one of the largest online advertising networks with, among others, an image index with more than two billion images. It offers further Internet related products such as price search engines, news channels, maps, web mail with instant messaging, office productivity services, and an online payment service.

Its services are offered in more than 100 languages, and its websites receive more than 580 million visitors per month.

According to the Complainant, its revenues for the third quarter of 2008 amounted to more than USD 5 billion.

The Complainant has offices in many countries world-wide. In India, where the Respondent lives, it has two research and development centers and two branch offices.

The Complainant owns trademark registrations and pending applications for its GOOGLE trademark in more than 100 countries covering goods and services in the Int. Classes 9, 16, 25, 35, 36, 38 and 42, for instance,

- Indian trademark registration No. 845041 GOOGLE, covering goods and services in Int. Class 09, application date March 12, 1999;

- Australian trademark registration No. 788234 GOOGLE, covering goods and services in Int. Classes 9, 38, 42, application date March 12, 1999;

- U.S. trademark registration No. 3140793 GOOGLE, covering goods and services in Int. Classes 11, 12 16, 18, 21, 25, 28, 35, 38 and 42, application date September 18, 2001.

The domain name <google.com> was created on September 15, 1997.

The Complainant also owns and operates a number of <google> domain names in other countries (about 200 gTLDs and ccTLDs).

The disputed domain name was created on May 11, 2008.

The disputed domain name is connected to a website which shows the words "CLICK HERE" as headlines. Below it is written "GOOGLEHRD.com". This website provides access to one of the Complainant`s websites.

The Complainant wrote to the Respondent on September 19, 2008 through its legal advisor objecting the registration and use of the disputed domain name by the Respondent and seeking its transfer to the Complainant. However, the Respondent never sent a response.

According to the material brought before the Panel, the Complainant was informed by one of its customers that the Respondent pretended to be a senior human resource development manager of the Complainant who promised students job opportunities with the Complainant. For this purpose, the Respondent instructed the students to book online courses and make payments to a certain bank account. The Respondent also used websites to which the disputed domain name were linked. The Complainant filed a police complaint which led to the Respondent`s arrest by the police at the beginning of January 2009.

5. Parties` Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant`s GOOGLE trademark. It argues that the disputed domain name entirely incorporates the GOOGLE trademark, which is also the distinctive element of this domain name. The addition of the letters "hrd" does not make any significant difference, as this letter combination is a commonly used abbreviation for "Human Resources Department".

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It argues that the Respondent`s purpose in selecting the disputed domain name was only to use the fame of the GOOGLE trademark to generate web-traffic and to confuse Internet users visiting the Respondent`s site when looking for the Complainant and its services. This was demonstrated by the fact that the Respondent misrepresented the Complainant when he made Internet users believe that he was hiring people on behalf of the Complainant.

The Complainant maintains that the disputed domain name has been registered only for commercial purposes and that such behaviour cannot constitute a bona fide offering of goods and services.

Moreover, the Complainant contends that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant states that the Respondent`s choice of the domain name was not accidental and must have been made with the Complainant`s company name and trademark in mind. In order to support this contention, the Complainant explains that "GOOGLE" is a unique coined word which exclusively refers to the Complainant and its services, that the GOOGLE trademark has acquired a considerable world-wide goodwill, that the Respondent registered the disputed domain name a significant period after the Complainant started using its GOOGLE trademark for the marketing of its goods and services and many years after the Complainant had registered the term GOOGLE as a trademark and domain name in many jurisdictions. The Complainant further adds that the Respondent`s way of using the disputed domain name creates an association with the Complainant, which does not exist at all.

B. Respondent

The Respondent sent an email to the Center shortly after the issuance of the Notification of Respondent`s Default indicating: "This domain case is handled by our registrar ASCIO and they have responded to your queries. We will of course correspond to any verdict your board will determine to be the correct one." The said email did not reply to the Complainant`s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

It is essential in UDRP proceedings that fundamental due process requirements be met. These requirements include notice to a respondent of proceedings that may substantially affect its rights. The Policy and the Rules have established procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and the initiation of these proceedings, and that the failure of the Respondent to furnish a substantive Response is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide the case on the basis of the Complainant`s submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).

A. Identical or Confusingly Similar

It is clear from the record that the Complainant has established rights in the trademark GOOGLE. The only difference between the GOOGLE mark and the disputed domain name is the addition in the domain name of the descriptive term "hrd".

Numerous decisions rendered under the Policy have held that the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

In this case, the Panel finds that the addition of the term "hrd", which is the commonly used abbreviation for "human resources department", to the disputed domain name compounds the likelihood of confusion, because it is likely that <googlehrd.com> could be understood by Internet users as providing a link to a website belonging to the Complainant or being sponsored by the Complainant. (See also Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231).

The Panel accordingly holds that the disputed domain name is confusingly similar to the Complainant`s GOOGLE trademark and that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, and that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: the Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. Moreover, given the fact that the Respondent obviously planned to involve himself in human resources affairs in relation with the Complainant, the disputed domain name has been registered for clear commercial purposes. Such a behavior cannot constitute a legitimate non-commercial or fair use of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for a complainant to show bad faith registration and use of domain names:

(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent`s documented out-of-pocket costs directly related to the domain name; or

(2) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that to its knowledge the registration of the domain name will not infringe the rights of any third party.

Given the high global reputation of the Complainant and its numerous branches world- wide and also in India, where the Respondent lives, a near identical domain name owned by the Complainant and the fact that the website to which the disputed domain name has been linked provides access to the Complainant`s website, the Panel finds that the Respondent was aware of and intended to target the Complainant`s trademark when he registered the disputed domain name (see Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.

The Panel finds further that the Respondent is also using the disputed domain name in bad faith. Internet users, searching for products and services of a specific company do often type freestyle addresses that combine trademarks and descriptive words (for instance, "Google" and "hrd") hoping to narrow down their search results. The website to which the disputed domain name resolves provides a link to the Complainant`s website. This could lead Internet users to believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant. Since most companies use ".com" domain names for their websites, Internet users may intuitively type in the disputed domain name.

The Respondent tried to benefit from such confusion. Internet users seeking jobs at the Google company could believe that the Respondent is either an employee of the Complainant`s HR-department or a human resource agent authorized by the Complainant. Therefore, they could contact him and pay for services, like online seminars, believing that this would improve their chances of getting a job with the Complainant.

Therefore, the Panel finds that the only plausible purpose, in the circumstances, of the Respondent having registered and subsequently used the disputed domain name was to attract Internet users to the Respondent`s website by creating a likelihood of confusion with the Complainant`s trademark and services and thus to take advantage also of the Complainant`s trademark and its reputation. Such a behavior constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

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 name <googlehrd.com> be transferred to the Complainant.

---

Christian Schalk
Sole Panelist

Dated: March 12, 2009