The Complainant is Google LLC, United States of America (“United States”), represented by Carlos Polo y Asociados, Spain.
The Respondent is Grigor Rostami, United States.
The disputed domain name <googled.co> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent submitted a request for extension of Response due date. In accordance with paragraph 5(b) and paragraph 5(e) of the Rules, the Center exceptionally granted the extension of time until November 26, 2020.
The Respondent did not submit a formal Response. Accordingly, the Center notified the Parties of Commencement of Panel Appointment on November 27, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 2, 2020. 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.
Founded by Larry Page and Sergey Brin in 1998, the Complainant is a Delaware limited liability company headquartered in Mountain View, California. The search engine maintains a collection of indexed online content that allows Internet users to search for and find a wide variety of online content in many different languages. The Complainant’s search engine is well-recognized worldwide.
The Complainant owns, among others, the following European Union Trade Marks (“EUTM”) through the European Union Intellectual Property Office:
- GOOGLE, EUTM Registration No.001104306, registered on October 7, 2005, in international classes 9, 35, 36 and 42; and
- GOOGLE, EUTM Registration No. 004316642, registered on Mars 29, 2005, in international classes 16, 25 and 36.
The above trademarks are hereinafter collectively referred to as the “GOOGLE Mark”.
The domain name <google.com>, owned by the Complainant, resolves to the Complainant’s official website. The Complainant also owns hundreds of other domain names that consist of or contain the GOOGLE Mark.
The Disputed Domain Name was registered on October 8, 2015. The Disputed Domain Name resolves to a website at “www.googled.co” that prominently features the Complainant’s GOOGLE Mark and reproduces the Complainant’s search page.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that the website at the Disputed Domain Name reproduces the Complainant’s website and search engine without the Complainant’s consent.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the GOOGLE Mark.
First, it is uncontroverted that the Complainant has established trademark rights in the GOOGLE Mark based on its long and continuous use globally. The Disputed Domain Name <googled.co> consists of the GOOGLE Mark in its entirety followed by the letter “d” plus the country code Top-Level Domain (“ccTLD”) “.co”.
The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the GOOGLE Mark.
Second, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or dictionary word, or a domain name comprising typos. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. When a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
Finally, the addition of a ccTLD, such as “.co”, in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s GOOGLE Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its GOOGLE Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a website that impersonates the Complainant’s official website in an attempt to deceive Internet users into believing that they have reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Names or by any name similar to it.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered after the registration of the Complainant’s GOOGLE Mark. The Panel finds it likely that the Respondent had the Complainant’s GOOGLE Mark in mind when registering the Disputed Domain Name.
Second, as demonstrated above, the Respondent used the Disputed Domain Name to resolve to a website that impersonated the Complainant’s official website in an attempt to deceive Internet users into believing that they reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, a strong indication of bad faith. The Respondent’s reproduction of the Complainant’s website evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s GOOGLE Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Seealso WIPO Overview 3.0, section 3.1.4, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
Moreover, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark and impersonates the Complainant’s official website is additional evidence of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <googled.co> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: December 7, 2020