DECISION

Google Technology Inc. v. Core Media

Claim Number:  FA0308000183908

PARTIES

Complainant is Google Technology Inc., Mountain View, CA, USA (“Complainant”) represented by Rose A. Hagan. Respondent is Core Media, The Hague, ZH, Netherlands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googhole.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com (hereinafter “Directnic.Com”).

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 August 13, 2003; the Forum received a hard copy of the Complaint on August 19, 2003.

On August 14, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain name <googhole.com> is registered with Directnic.Com and that Respondent is the current registrant of the name. Directnic.Com has verified that Respondent is bound by the Directnic.Com 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 August 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@googhole.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 25, 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.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <googhole.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

2. Respondent does not have any rights or legitimate interests in the <googhole.com> domain name.

3. Respondent registered and used the <googhole.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Google Technology Inc., is one of the largest and most recognized providers of Internet search services in the world and has used the GOOGLE mark in conjunction with those services since 1997. Complainant has trademark registrations in Australia (Reg. No. 788234), Canada (Reg. No. TMA539576), Israel ( Reg. No.126,479), Japan (Reg. No. 4,478,963), Mexico (Reg. No. 622722), New Zealand (Reg. No. 306520) as well as Benelux Reg. No. 694,499. Complainant registered the <google.com> domain name on September 15, 1997 and uses it to provide assistance to Internet users for Internet research and navigation.

Respondent, Core Media, registered the <googhole.com> domain name on September 5, 2002, without license or authorization to use Complainant’s GOOGLE mark for any purpose. Respondent uses the disputed domain name to host a compilation of gallaries of adult-oriented images. The site mimics Complainant’s website at the <google.com> domain name in that it includes a “Googhole” mark that is identical in font and color to Complainant’s GOOGLE design mark. The disputed domain name also includes a search box that mimics the search features of Complainant’s GOOGLE search engine, and any searches performed from this search box displays an actual search results page from Complainant’s GOOGLE search engine.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 established rights in the GOOGLE mark through registration of the mark with the appropriate governmental agencies worldwide, as well as through widespread use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); 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).

Respondent’s <googhole.com> domain name is confusingly similar to Complainant’s GOOGLE mark. Phonetically, Respondent’s domain name is practically identical to Complainant’s GOOGLE mark. Moreover, the disputed domain name simply inserts the letters “ho” in the middle of Complainant’s mark. In either context, the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).

Accordingly, the Panel finds that the <googhole.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name to provide a forum for Internet users to view a wide array of adult-oriented images. Given the fact that Respondent has gone as far as copying Complainant’s logo at the disputed domain name, Respondent’s actions have the effect of misppropriating the goodwill Complainant has built up around the GOOGLE mark to direct Internet users to images that tarnish that mark. Such tarnishing use of Complainant’s mark, presumably for commercial gain via referral fees, does not evidence rights or legitimate interests in the disputed domain name under the safe harbors available to Respondent in Policy ¶ 4(c)(i) or (iii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Respondent, Core Media, does not appear to be “commonly known by” the name GOOGHOLE, and has not come forward with any evidence to contradict this appearance. Thus, the Panel holds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <googhole.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent, through its use of a domain name that is confusingly similar to Complainant’s mark, its use of a logo that is confusingly similar to that of Complainant, and through its link to Complainant’s search engine, has attempted to capitalize on the goodwill surrounding Complainant’s famous GOOGLE mark in order to expose Internet users to adult-oriented material. The circumstances of this case permit the inference that Respondent knowingly registered a domain name that infringed on Complainant’s GOOGLE mark, and Respondent’s use of that knowledge to tarnish Complainant’s mark evidences bad faith use and registration of the disputed domain name. See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

The Panel thus finds that Respondent registered and used the <googhole.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

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

Dated:  October 6, 2003

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