Domain name dispute among two "Google" domains
WIPO, the global forum for intellectual property services, policy, information and cooperation agency of the United Nations, self-founded by 193 member states, has settled the disputation Case No. D2013-0298 between Google Inc. of Mountain View, California, United States of America and Google Adwords Service at HCMC, Vietnam of Ho Chi Minh City, Vietnam, on the matter of the domain name “google-vietnam.com” as registered with eNom.
The Panel has considered that using the disputed domain name leads to an intentionally and illicit attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the rival mark as to the source, sponsorship, affiliation, or endorsement of that website and that the disputed domain name has been registered and in bad faith.
Google and its Vietnamese clone
Google is one of the most well-known Internet search providers of the world. It is located in Mountain View CA and is operating from 1997 under the laws of Delaware. Google provides a lot of web searching related services as advertising, booking travel fares and translation, accessible throughout its domain www.google.com. Its domain is open to million visitors per month looking for one of its services that is easily identifiable thanks to its being named and marked after Google such as Google Shopping or Google Maps.
Obviously, Google is not the only internet services provider, although one of a celebrity due also to its trailblazing workplaces: employees churning out tech world-changing ideas around ping-pong tables or roaming from desk to desk aboard electric carts.
Vietnam has its own entity operating in the Internet field too. Located in the less fascinating town of Ho Chi Minh City, it operates under the name of Google Adwords Service. Far from being an off-shot of real Google, the Vietnamese clone has created its domain name in 2010 simply replicating name and marks of the Mountain View’s giant tech company.
Truth to be told, Google’s multiple registered trademarks include Vietnam registered trademark No. 11157/QD-SHTT, registered on October 30, 2006.
Google Adwords Service Vietnam recalls the original advertising service
Not only similar to the name, the two of a kind resemble also for the layout of their home pages: in fact, Vietnamese internet provider named Google’s web pages reproduce the appearance of American internet provider named Google’s website and it welcomes potential advertisers with the phrases “Advertising online web service in Vietnam” and “Advertise your business on the front page”.
The unique difference is that results, advertising and services are sorted by Vietnamese language and not English.
Since the rival mark is closely recalling Google’s official one, is it is easily predictable that visitors are convinced to surf through Google.com Vietnamese domain but Google has never licensed it to use its own mark neither its domain name.
The proceedings submitted to the Panel
The Complaint was filed with the WIPO Arbitration and Mediation Center on February 13, 2013. The proceedings commenced on February 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.
Only the Complainant contends
Google Inc. or “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. It submits that the GOOGLE mark has been reproduced in its entirety including: (a) an exact reproduction of the trademark; (b) a hyphen; (c) the country name Vietnam; and (d) the top level domain suffix “.com”.
Google asserts that adding the generic word Vietnam to the trademark Google is insufficient to avoid any confusion or to give any distinctiveness to the domain name as a geographic term is generally considered as a generic term.
The Complainant submits that The Respondent has not been licensed or otherwise permitted to use its trademark, to apply for or use any domain name consisting of or incorporating its trademark. It asserts that registration of the mark being aware of the Complainant’s activities establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Google Adwords Service, The Respondent, did not reply to the Complainant’s contentions.
The disputed domain name is ordered to be transferred to Google.Inc
The Panel has ordered that the disputed domain name google-vietnam.com must be transferred to the Complainant, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules since all of the elements enumerated in paragraph 4(a) of the Policy has been demonstrated satisfied.
The elements were: (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.
Satisfied provisions of the Policy and the Rules
As to the “Identical or Confusingly Similar” disputed domain, the Complainant’s extensive citation of its registered trademark portfolio proved that the Complainant has rights in the GOOGLE trademark while it is incorporated in the disputed domain name in its entirety.
Because the addition of a geographic indicator generally is not useful to distinguish that domain name from the trademark, the distinctive element of the disputed domain name is the Complainant’s GOOGLE trademark and the word “Vietnam” is merely suggestive of a country in which consumers may seek the Complainant’s services.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has established the distinctive element under the Policy.
The “Rights or Legitimate Interests” element appears to the Panel as a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name under the Policy.
It has been not licensed or otherwise permitted to use GOOGLE trademark or to incorporate it into a domain name; plus, the Respondent must have been aware of this when it registered the disputed domain name; and 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.
On the contrary, it is clear to the Panel that the Respondent is using the disputed domain name in association with a website which directly targets the GOOGLE trademark and the services which are provided thereunder.
Must be added that the Respondent has not provided any evidence of rights or legitimate interests in the disputed domain name.
Confusion and bad faith implied
The Panels finds evidence that the disputed domain was “Registered and Used in Bad Faith” recurring the circumstances provided by the Policy.
The Respondent’s intent was to attract consumers to its own website that directly references the well-known GOOGLE trademark creating the impression that the Respondent is either the Complainant or an official representative thereof for the country of Vietnam.
The Panel considers that using the disputed domain name translates into an intentional attempt to attract, for commercial gain (and maybe also for search engine point of view) , Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s search engine.
Three elements of the Policy
The decision was submitted to the recurrence of the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” for short), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules” for short) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy and ordered in accordance with paragraphs 4(i) of the Policy and 15 of the Rules.
Three main elements to be found for satisfaction under the Policy are enumerated in paragraph 4(a), (b) and (c). Policy is the most important mandatory process established for the resolution of international disputes and conflicts between trademarks and domain names, while not excluding the jurisdiction of the internal courts. Registrants from adherent Countries must agree to participate in an arbitration should any third party assert a claim of infringement of rights.
The identical case of Philips
An almost identical case was submitted to the Panel between the well-known Dutch company of electronics Philips and an individual from India who registered the domain name philipsindia.net. While Philips has secured trade mark registrations for the name in more than 150 jurisdictions worldwide and has registered the name for promoting the company as well as its key products via web, the Respondent remained almost unknown.
The Panel found the disputed domain confusingly similar to the trademark as registered by Philips and registered in bad faith, as unfair and detrimental to the business interests of the Complainant according to the Policy elements.