DECISION

Google Technology, Inc. v. googleDeluxe.com c/o Kevin Aspden

Claim Number: FA0306000164548

PARTIES

Complainant is Google Technology, Inc., Mountain View, CA, USA (“Complainant”) represented by Rose A. Hagan. Respondent is googleDeluxe.com c/o Kevin Aspden, Burnley, Great Britian (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googledeluxe.com> registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 18, 2003; the Forum received a hard copy of the Complaint on June 23, 2003.

On June 23, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <googledeluxe.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@googledeluxe.com by e-mail.

A timely Response was received and determined to be complete on July 7, 2003.

On July 10, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <googledeluxe.com> which fully incorporates Complainant’s famous trademark and trade name GOOGLE, is confusingly similar to Complainant’s GOOGLE trademark and trade name.  Respondent does not have any rights or a legitimate interest in the domain name because it contains and trades on the goodwill of Complainant’s GOOGLE mark and name, and Respondent’s use of that mark and name is unauthorized.  Respondent is not and has never been a licensee of Complainant.  Respondent’s registration and use of the domain name meets the bad faith requirement described in Paragraph 4(a) of the Policy.

B. Respondent

Respondent contends that the website at the <googledeluxe.com> domain name is different from Complainant’s website at the <google.com> domain name because, unlike Complainant’s website, Respondent’s website features daily polls, weather, news, games, cooking recipes and children’s stories.  Respondent argues that he has rights to and legitimate interests in the <googledeluxe.com> domain name because he was interested in a fully functional search engine and, therefore, purchased the disputed domain name on Ebay.  Respondent insists that its primary interest in the domain name was the fully functional search engine, which Respondent purchased along with the domain name registration.

FINDINGS

1. Google Technology Inc., formerly known as Google Inc. ("Google” or "Complainant"), brings this complaint against googleDeluxe.com c/o Kevin Aspden (collectively, “Respondent”).  Google Inc. changed its name to Google Technology Inc. in October 2002.  This was solely a name change; the entity remains the same.  This name change has not yet been recorded against the trademarks and domain names relied upon in this Complaint, which are currently in the name of Google Inc.  However, since the entity is the same, Google Technology Inc. is the owner of these trademarks and domain names.

2. Since that time, Google is one of the largest, most highly recognized, and widely used Internet search services in the world.  Google’s primary website is located at <google.com>.  Google’s website is a popular destination on the Internet.

3. Currently, the GOOGLE search engine has an index of over 3 billion web pages, and responds to more than 200 million search queries per day.  The GOOGLE search engine offers Internet users an easy-to-use interface, advanced search technology, and a comprehensive array of search tools.  In addition, the GOOGLE search engine allows Internet users to search for and find content in many different languages; access stock quotes, maps, and news headlines; access telephone book listings for every city in the United States; and retrieve more than 18 million .PDF documents.

4. Google offers software and hardware products.  Google also offers co-branded web search solutions for information content providers, and has partnerships with 130 companies in more than 30 different countries.  Google also offers a Usenet site, a news site, a catalog search site, a product search site, and a site where Internet users can have their questions answered by researches.

5. The GOOGLE mark identifies Google’s search services, search engine technology, and associated services.  Having been widely promoted among members of the general consuming public since 1997, and having exclusively identified Google, Complainant’s GOOGLE mark and name symbolize the tremendous goodwill associated with Google.  Furthermore, due to widespread and substantial international use, Google’s GOOGLE mark and name have become famous.

6. Google is the owner of numerous United States trademark applications for the mark GOOGLE.  Google is the owner of trademark registrations for the GOOGLE mark issued in various countries throughout the world.

7. Google’s trademark rights in its GOOGLE mark, based on its trademark filings in the United States and elsewhere throughout the world, and on its common law rights under United States law acquired through the extensive use of the GOOGLE mark, trade name, and domain name, long predate Respondent’s registration of the domain name <googledeluxe.com> on April 18, 2002.

8. The domain name <googledeluxe.com> was registered on January 4, 2003 by Spencer Clapham.  On April 24, 2003, Complainant became aware that Mr. Clapham had offered the Domain Name for sale on eBay.  The auction had closed on April 24, 2003.  On that same day, Google sent a cease and desist letter to Mr. Clapham via email, demanding that Mr. Clapham discontinue use of the domain name, refrain from transferring the domain name to any other party, and transfer the domain name to Google. 

9. Someone from the email address listed in the WHOIS record for Spencer Clapham responded via email on April 25, 2003, agreeing to transfer the domain name to Google.  Google’s domain name management company initiated the transfer, but the registrant did not complete the transfer.

10. On April 29, 2003, Google received an email from K. Aspden stating that he had purchased the “domain name and website Googledeluxe.com from a Mr Clapham who was selling it via eBay.”  Mr. Aspden further stated, “Googledeluxe.com is a new site and as such has had nopromotion [sic].”  He also stated “As I have just taken control of this Domain Name and site and because I don’t know how to discontinue or transfer the domain name, it will remain there until such time an agreement is reached between Google and myself.

11. On April 29, 2003, Complainant responded, pointing out precedent that inclusion of a famous trademark in a domain name constitutes bad faith registration and repeating the demand to transfer the domain name.

12. On April 30, 2003, Mr. Aspden stated that he would transfer the domain name contingent on receiving a “reasonable offer that takes into consideration: (1) The time and expense involved in updating the present site.  (2) the fact that GoogleDeluxe.com is a good name.  (3) the purchase costs and transfer of a new Domain Name.” 

13. On April 30, 2003, Complainant responded, noting that Respondent was seeking monetary gain in excess of the domain name registration fee, and offering to reimburse the fee charged by the registrar, but no further compensation. 

14. On April 30, 2003, Respondent asked that Complainant reconsider his proposal, and characterized his request as a consideration of his “out of pocket expenses.”

15. On April 30, 2003, Complainant responded, offering to reimburse not only the domain name registration fee, but also the £180 represented as the closing bid on eBay.  On May 1, 2003, Respondent refused this offer. 

16. Respondent is using the domain name in connection with an Internet search engine called “GoogleDeluxe.”  The site encompasses a search engine and provides news and advertising services.  At the time Respondent purchased the domain name from Mr. Clapham, Respondent wanted a fully functional search engine, although the name GOOGLEDELUXE was a factor in the purchase.

17. Respondent’s registration and use of the domain name is designed to cause confusion and to deceive consumers into mistakenly believing that Respondent and its search engine services are offered, authorized, or sponsored by Complainant; or are otherwise connected, associated, or affiliated with Complainant.  Internet users are likely to believe that Respondent’s site <googledeluxe.com> is a deluxe version of the GOOGLE search engine.  Respondent undoubtedly intended to profit, and may have already profited, by its unauthorized use of the GOOGLE mark to direct Internet users to its commercial website. 

18. Respondent’s registration and use of the domain name deprives Complainant of Internet traffic rightly intended for Complainant, thereby disrupting Complainant’s business. 

19. Respondent states that the registrar of the domain name is namecheap, Inc. (NameCheap.com) and not Enom, Inc.  However, namecheap is a domain name reseller for Enom.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant has numerous trademark registrations for the GOOGLE mark in countries outside of the U.S.  These trademark registrations demonstrate that Complainant has rights in the GOOGLE mark for purposes of Policy ¶ 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant also has pending trademark applications with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (Ser. Nos. 75,978,469 and 75,554,461 filed on September 16, 1999 and September 16, 1998, respectively).

Complainant has also shown common law rights in the GOOGLE mark through use. See Google, Inc. v. Abercrmbie 1, FA101579 ( Nat. Arb. Forum December 10, 2001) (Through continuous and extensive use Complainant has established common law rights); see also Google Inc. v. Mikel M. Freije, FA102609 (Nat. Arb. Forum January 11, 2002) (“Complainant has common law rights in the Google mark due to its extensive use of the mark on the Internet in its business partnerships and the volume of people to which it provides its services.”).

Respondent’s <googledeluxe.com> domain name is confusingly similar to Complainant’s GOOGLE mark. Neither the addition of the generic or descriptive term “deluxe” nor the addition of the generic top-level domain “.com” sufficiently distinguishes the disputed domain name from Complainant’s famous mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); See also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO April 16, 2001) (finding the addition of a generic term to the GOOGLE mark in a domain name does not provide a basis for distinguishing it from Complainant’s mark).

Rights or Legitimate Interests

Complainant asserts that Respondent’s use of the <googledeluxe.com> domain name to offer search services does not constitute a bona fide offering of goods and services.  Respondent’s use of the disputed domain name to compete with Complainant’s business indicates neither a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO October 12, 2000) (holding that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods and services.  To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”).

Respondent is not and has not been commonly known by GOOGLE DELUXE or <googledeluxe.com> and, thereofore, Respondent has failed to establish its rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent is not making legitimate, noncommercial or fair use of the disputed domain name, without intending to mislead and divert consumers or to tarnish Complainant’s GOOGLE mark for commercial gain.  See Google Inc. v. Mikel M. Freije, FA102609 (Nat. Arb. Forum February 11, 2002) (“[respondent] 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.”)

Registration and Use in Bad Faith

Respondent is using the <googledeluxe.com> domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s GOOGLE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Moreover, Respondent’s registration of the <googledeluxe.com> domain name indicates Respondent was on notice of Complainant’s rights in the GOOGLE mark.  Respondent’s registration and use of the disputed domain name despite actual or constructive knowledge of Complainant’s rights demonstrate Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Google Inc. v. Jon G., FA106084 (Nat. Arb. Forum, April 26, 2002) (opportunistic bad faith found where the respondent registered domain name with knowledge of Complainant's GOOGLE mark and used the website to trade on Complainant’s fame and goodwill); see also Google v. Abercrombie 1, FA101579 ( Nat. Arb. Forum December 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]”).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <googledeluxe.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated:  July 24, 2003

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