WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. Google Adwords Service at HCMC, Vietnam

Case No. D2013-0298

1. The Parties

The Complainant is Google Inc. of Mountain View, California, United States of America (“USA”), represented by Ranjan Narula Associates, India.

The Respondent is Google Adwords Service at HCMC, Vietnam of Ho Chi Minh City, Vietnam.

2. The Domain Name and Registrar

The disputed domain name <google-vietnam.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2013. On February 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, 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.

On February 26, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraph 10, relating to the identification of the Registrar of the disputed domain name. The Complainant filed an amendment to the Complaint on February 27, 2013.

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 February 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 5, 2013. 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.

4. Factual Background

The Complainant is a company organized and existing under the laws of Delaware, USA and having its corporate office in Mountain View, California, USA. The Complainant is extremely well known in the field of Internet search and its primary website at “www.google.com”, which provides inter alia search and advertising services, is among the world’s most visited online locations, benefitting from some 581 million unique visitors per month.

The Complainant’s Internet search and various other online products and services are collectively identified under the GOOGLE mark, which the Complainant has widely promoted among the consuming public since 1997. The Complainant owns multiple registered trademarks in respect of the word GOOGLE including, for example, Vietnam registered trademark No. 11157/QD-SHTT, filed on April 11, 2005 and registered on October 30, 2006 in international classes 9 and 42.

The Respondent is an entity of unknown type with an address in Ho Chi Minh City, Vietnam. The disputed domain name was created on January 21, 2010. The screenshots of the website associated with the disputed domain name, together with translations from Vietnamese provided by the Complainant, indicate that the said website references the Complainant’s search engine website and reproduces the appearance thereof along with the phrases “Advertising online web service in Vietnam” and “Advertise your business on the front page.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name comprises (a) an exact reproduction of the Complainant’s GOOGLE trademark; (b) a hyphen; (c) the country name Vietnam; and (d) the top level domain suffix “.com”. The Complainant submits that the GOOGLE mark has been reproduced in its entirety in the disputed domain name. The Complainant asserts that the mere addition of the country name Vietnam would lead others to think that the disputed domain name is an official website of the Complainant in Vietnam or that the Respondent is associated with the Complainant. The Complainant notes that it has been recognized in cases under the Policy that adding a generic word to a trademark is insufficient to avoid any confusion or to give any distinctiveness to a domain name and that a geographic term is generally considered as a generic term.

The Complainant submits that it has not licensed or otherwise permitted the Respondent to use its GOOGLE trademark, or any other trademark incorporating the GOOGLE mark. The Complainant states that has also not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating its GOOGLE mark. The Complainant asserts that when the Respondent registered the disputed domain name, it was aware of the Complainant’s activities, its GOOGLE trademarks and its domain names and that these facts establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant notes that the Respondent registered the disputed domain name in 2010 which was long after the Complainant developed its extensive rights in the GOOGLE mark. The Complainant states that there is no credible legitimate reason for the Respondent to have chosen to adopt the disputed domain name. The Complainant submits that the word GOOGLE is a unique coined word, which is exclusively referable to the Complainant and its famous suite of services. The Complainant adds that the term “google-vietnam” in the disputed domain name is not a natural word nor a common name, nor one which is a common or natural descriptor for the use which is being made of the disputed domain name and that the Respondent’s purpose in selecting the disputed domain name was plainly to use the fame of the Complainant’s GOOGLE mark to generate web-traffic and to confuse Internet users visiting the Respondent’s site when looking for the Complainant and its famous suite of services.

The Complainant notes that the website associated with the disputed domain name renders identical services to those provided by the Complainant and makes use of the Complainant’s GOOGLE logo and trademark on the home page thereof. The Complainant submits that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent’s choice of the disputed domain name is not accidental and has been made to derive unfair monetary advantage. The Complainant asserts that the fame and unique qualities of its GOOGLE trademark make it extremely unlikely that the Respondent created the disputed domain name independently. The Respondent states that at the time of registration of the disputed domain name, the Complainant’s GOOGLE trademark and its website at “www.google.com” were well known and the said trademark was registered in multiple jurisdictions including Vietnam, where the Respondent is based.

The Complainant submits that the Respondent is using the disputed domain name to misrepresent to Internet users that the associated website is an official website of the Complainant in Vietnam. The Complainant contends that the entire business activity of the Respondent is to deceive the innocent trade and public by misrepresenting the Respondent as being part of the Complainant’s company or to misrepresent that the Respondent’s activities have been authorized, approved or sponsored by the Complainant. The Complainant also states that the Respondent has failed to comply with the Complainant’s demands regarding transfer or cancellation of the disputed domain name and that the Respondent’s failure to reply to the Complainant’s cease and desist letter indicates bad faith registration and use of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied based upon the Complainant’s extensive citation of its registered trademark portfolio, including the trademark cited in the Factual Background section above, that the Complainant has rights in the GOOGLE trademark. The said trademark is incorporated in the disputed domain name in its entirety along with a hyphen and the geographic descriptor “Vietnam”. The top level domain “.com” may be disregarded for the purposes of comparison, as is customary in cases under the Policy.

Numerous previous cases under the Policy have found that where a distinctive trademark is incorporated in its entirety within a domain name, the addition of a geographic indicator will generally not distinguish that domain name from the trademark (Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171). In the present case, the Panel considers that the primary, dominant and distinctive element of the disputed domain name is the Complainant’s well-known GOOGLE trademark. The addition of the word “Vietnam” to the said trademark appears to the Panel to be merely suggestive of a country in which consumers may seek the Complainant’s services.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and accordingly that the Complainant has established the first element under the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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 or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.”

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present matter, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise permitted the Respondent to use its GOOGLE trademark or to incorporate it into a domain name; (2) that, given the fame of the Complainant’s mark and the fact that it is uniquely referable to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the present use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.

The Respondent has not responded to the Complainant’s contentions however it is clear to the Panel that the Respondent is using the disputed domain name in association with a website which directly targets the Complainant’s GOOGLE trademark and the services which the Complainant provides thereunder. The Panel considers that such use cannot confer any rights or legitimate interests upon the Respondent. Despite being given an opportunity to do so, the Respondent has chosen to provide no evidence of rights or legitimate interests in the disputed domain name or any suitable explanation of its conduct such that it has failed to rebut the prima facie case made by the Complainant. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the Complainant has established the second element under the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 the Panel’s opinion, the evidence in the present case overwhelmingly points to the conclusion that the Respondent registered and used the disputed domain name with the Complainant’s trademarks firmly in mind and with intent to target these for commercial gain by deceptively attracting consumers to the Respondent’s website. The said website directly references the Complainant’s famous search engine and well-known GOOGLE trademark such that the impression created thereby, reinforced by the disputed domain name, is that the Respondent is either the Complainant or an official representative thereof for the country of Vietnam. The Respondent has provided no explanation, either by responding to the Complainant’s correspondence or to the Complaint in the present case, as to its motivation for registering and using the disputed domain name and the Panel can conceive of no possible reason on the Respondent’s part which might point in the direction of good faith registration and use of the disputed domain name.

In all of these circumstances, the Panel considers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and that the disputed domain name has therefore been registered and is being used in bad faith.

The Complainant has accordingly established the third element under the Policy.

7. Decision

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 <google-vietnam.com> be transferred to the Complainant

Andrew D. S. Lothian
Sole Panelist
Date: April 19, 2013