GOOGLE just lost a dispute over the domain name, Oogle.com. This is the third time that I assisted a client in fending off a UDRP from Google The other cases were over Groovle.com and Goggle.com. Thank you to the Panelists for their time and decision and in particular to their well reasoned explanation of “beneficial ownership” which adds a lot of clarity to UDRP law.. The text of the case is below:

national arbitration forum

 

DECISION

Google Inc. v. Blue Arctic LLC
Claim Number: FA1206001447355

 

PARTIES

Complainant is Google Inc. (“Complainant”), of Mountain View, California, USA, represented by Anne H. Peck, Gavin L. Charlston and Morgan A. Champion of Cooley LLP, Palo Alto, California, USA.  Respondent is Blue Arctic LLC (“Respondent”), of Kissimmee, Florida, represented by Zak Muscovitch of The Muscovitch Law Firm, of Toronto, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oogle.com>, registered with Moniker.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 6, 2012.
On June 8, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <oogle.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected]  Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On July 2, 2012, Respondent submitted a Response.
On July 9, 2012, Complainant submitted an additional statement.  On July 10, 2012, Respondent submitted an objection to Complainant’s additional statement and, “in the alternative,” an “Additional Response of the Respondent.”  The Panel determines that these additional documents were timely submitted pursuant to the National Arbitration Forum’s Supplemental Rule 7 and, accordingly, the Panel accepts them.
On July 12, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as the Chair of the three-member Panel along with Reinhard Schanda and Professor David E. Sorkin as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
·         Complainant’s search engine “has become one of the largest, most highly recognized, and widely used Internet search services in the world.”
·         “The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin,” and Complainant’s “services have been publicly available under the GOOGLE mark since 1997.”
·         “As reflected in [Complainant’s] trademark registrations and affirmed by [Complainant’s] officers in filings made to the U.S. Patent & Trademark Office under penalty of perjury, [Complainant] has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997 and in connection with other products and services since early 1999.”
·         The Disputed Domain Name was “originally registered on February 7, 1999” and “transferred to the current registrant in late 2004.”
·         The Disputed Domain Name “resolves to a variety of adult websites” and “has previously been used to host websites that blatantly copy the Google logo, recreate the overall look and feel of the Google website, and create confusion as to whether the website is sponsored by, endorsed by, or affiliated with Google.”
·         The Disputed Domain Name is currently being offered for sale “on a common domain name auction site” for $300,000.
·         The Disputed Domain Name is confusingly similar to the GOOGLE trademark because it “merely delete[s]” one letter from a famous mark and “appears intended to capitalize on frequent user misspellings or typographical errors.”
·         Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,  “the GOOGLE Mark is so well known throughout the world that it is difficult to conceive of any purported rights or legitimate interests Respondent may claim in the Domain Name”; “Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark” because “there is no indication it is known by that name”; “Complainant has not authorized or licensed Respondent to use any of its trademarks in any way”; the Disputed Domain Name “currently resolves to a website offering sexual services and displaying pornographic and profane content”; the Disputed Domain Name is “an example of typosquatting”; and because “the Domain Name has historically resolved to websites mimicking the look and feel of Google’s home page . . . Respondent is now and has historically been capitalizing on the near identity between the Domain Name and Google’s famous trademark to generate revenue from consumers who are seeking Google’s services and arrive at Respondent’s website by mistake.”
·         Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[t]he fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Name by Respondent, make it extremely unlikely that Respondent registered the Domain Name without independent knowledge of Google”; “even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith”; “[p]rior use and registration of the Domain Name by a third party is irrelevant for purposes of evaluating Respondent’s bad faith”; “Respondent’s current use of the Domain Name to divert Google’s users to a fee-based sexual networking site that contains pornographic and vulgar content establishes Respondent’s bad faith”; “Respondent’s recent use of the Domain Name to obtain users’ personal information through scam survey sites is evidence of phishing and represents bad faith” (internal punctuation omitted); “it is impossible to conceive of any potential legitimate use of the Domain Name”; “[w]here a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith” (internal punctuation omitted); “Respondent’s use of Complainant’s famous trademark in the Domain Name, combined with the offer to sell the domain for hundreds of thousands of dollars, amounts to bad faith use of the Domain Name”; and ““registration and use of a domain name that differs from Complainant’s mark by only the deletion of one letter indicates ‘typosquatting’, which is evidence of bad faith registration and use” (internal punctuation omitted).
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
·         A declaration provided by Christopher Neuman states that he is “the sole member and manager of” Respondent and that he “personally registered” the Disputed Domain Name on or about February 7, 1999, when, at the age of 13, he “carried on business under a fictional unregistered business name, namely Fusion3k Designs, and accordingly registered the Domain Name under Fusion3k Designs.”
·         In the declaration, Neuman states that he has “been the continuous and uninterrupted beneficial owner of the Domain Name since I originally created it on February 7, 1999,” and that the “only reason why I ever changed the nominal registrant details was to reflect my current business name, which evoled from Fusion3k Designs to Blue Arctic (another unregistered business name) to most recently Blue Arctic LLC, a registered company.”
·         The declaration further states: “My reason for registering the Domain Name was because in or about 1998 or 1999, I had become acquainted through the online world of software programming and website design, with another young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
·         The declaration further states: “Through my friendship with Oogle, I learned that Oogle had a personal website associated with the domain name, [<oogle.net>], which Oogle had selected due to Oogle’s online moniker of ‘Oogle’.  I noticed that Oogle had not registered [<oogle.com>] and proceeded to register the Domain Name with the intention of collaborating on a website with Oogle.”
·         The declaration further states: “At no time prior to my registration of the Domain Name did I ever for even a second consider that [<oogle.com>] was an attractive domain name due to the existence of [<google.com>] or the Complainant’s trademarks.”
·         The declaration further states that Neuman previously used the Disputed Domain Name in connection with an “online shopping website” and later intended to use it as “a forum for programmers.” 
·         The declaration further states: “In 2010 there were a few weeks where the Domain Name displayed a certain logo which was created and uploaded by a friend of mine, David Shiffman.  This logo resembled the Google logo but it had originally had a playful tag line of, ‘Due to the economy the G has been laid off’.  At the time we thought it was a funny and innocent usage, however upon reflection, I had it taken down after only a matter of weeks.”
·         The declaration further states: “The Domain Name was also temporarily used in connection with adult matchmaking services, but I thought that this was lawful and permissible.”
·         The name “Oogle” “has been used by numerous parties and business for many years, in connection with all manner of goods and services that have absolutely nothing to do with the Complainant.”  In support thereof, Respondent cites the following U.S. trademark registrations: Nos. 820,267; 1,329,546; 1,392,389; 2,496,755; 3,889,157; and 2,883,240.
·         “Harvard University has published a study which shows that over 15% of Americans use the term ‘Oogle’ as a word to describe gawking at someone, and 4.5% of Americans use the term ‘ogle’ and ‘oogle’ interchangeably.”
·         With respect to paragraph 4(a)(i) of the Policy: “The Respondent acknowledges that the Complainant has several registered trademarks for GOOGLE in connection with its widely known search engine and related services” and “[t]he Respondent further acknowledges that the Domain Name is sufficiently ‘confusingly similar’ to the Complainant’s current trademark rights for the purposes of meeting this part of the three-part test under the UDRP, based upon the Complainant’s date of first use of its registered trademarks.”
·         With respect to paragraph 4(a)(ii) of the Policy: “Years before any notice of this dispute, the Domain Name was used in connection with a bona fide offering of goods and services, namely the shopping website from 2000-2002 . . . and the programming related website from 2002-2003.”
·         With respect to paragraph 4(a)(iii) of the Policy: The Disputed Domain Name could not have been registered in bad faith because “the evidence shows that there can be no doubt that the genuine reason for registering the Domain Name in the first place, had nothing to do with the Complainant, who was barely known at that time in 1999”; changes in the name of the registrant of the Disputed Domain Name since 1999 are irrelevant and do not constitute a new registration because “Christopher Neuman has had uninterrupted and continuous beneficial ownership of the Domain Name from its original creation to-date.”
C. Additional Submissions
In its additional submission, Complainant contends, in relevant part, as follows:
·         “[O]ther than the testimony of Mr. Christopher Neuman, self-identified as the ‘sole member and manager’ of Respondent, Respondent provides no documentary evidence setting forth the ownership of the Domain Name prior to December 13, 2002, or the transfer of ownership from Fusion3k Designs, the owner of the Domain Name as of that date, to Respondent.”
·         “[T]he uncontroverted evidence establishes that Respondent has, since coming into possession of the Domain Name in late 2004, repeatedly and willfully used the Domain Name to take advantage of Google’s users and to trade off the goodwill in and extensive investment Google has devoted to the protection of the famous GOOGLE Mark.”
·         “[W]hile Respondent goes to great efforts to cast itself in a positive light, its knowing and willful abuse and deception of Google’s users over the course of many years, for its own financial gain, demonstrates a pattern of behavior that undermines its claims of good faith and makes clear its wrongful intent and motivation in registering and using the Domain Name.”
·         Complainant sent a demand letter to Respondent in September 2009; initially, Respondent offered to sell the Disputed Domain Name for $600,000 and, later, Respondent stopped used the Disputed Domain Name.  Then, in March 2010, Neuman contacted Complainant and indicated that he was “very interested in setting up a parking page for [<oogle.com>],” which would “give Google full access to the contents displayed on [<oogle.com>].”
·         “[T]he GOOGLE Mark had become very well known and recognized far prior to February 1999,” so “Respondent’s attempt to deny bad faith on this basis is therefore without merit.”
·         “Mr. Neuman avers that, even as a thirteen-year-old child, he was a ‘programmer and website designer’ and participated in ‘online chats and forum postings’ relating to ‘software programming and website design.’ . . . An individual with such experiences was likely to be highly aware of all available internet search engine options in 1999, and in particular, the well-regarded and highly publicized Google search engine.”
In its additional submission, Respondent contends, in relevant part, as follows:
·         “[T]he earliest available historical Whois information from 2002… clearly shows that Christopher Neuman was the administrator of the Domain Name, with identical address as the registrant, which was an unregistered business name that Christopher adopted at the age of 13.”
·         “[T]here is no reasonable basis for creating the fiction that the name was registered ‘like new’ by a stranger” in 2004.
·         A letter from Respondent’s attorneys dated September 21, 2009, in response to the demand letter sent by Complainant, states: “Our client registered [<oogle.com>] in February 1999 based on the nickname of one of our client’s friends, a programmer who went by the name ‘oogle’ on various message boards in the 1990’s . . . . In registering the domain name [<oogle.com>], our client was not in any way referring to Google, Inc.”
·         “[T]here is nothing inherently wrongful in offering to sell a domain name for in excess of out of pocket expenses, when the domain name was registered in good faith to begin with, i.e. was not registered because someone else‘s trademark rights.”

FINDINGS

The record does not support a finding that the Disputed Domain Name has been registered and is being used in bad faith.  As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights or whether Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

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.”
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.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy.  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., D2005-1246 (WIPO June 7, 2012) (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element . . . it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, D2005-1289 (WIPO Jan. 31, 2006) (finding that, where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – with respect to the Disputed Domain Name, the Panel makes no findings with respect to the first or second elements of the Policy.

Identical and/or Confusingly Similar

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the first element of the Policy, paragraph 4(a)(i), the Panel refrains from doing so.

Rights or Legitimate Interests

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

Registration and Use in Bad Faith

The Panel initially addresses the issue raised by Respondent that it has been the “beneficial owner”[1] of the Disputed Domain Name since it was created on February 7, 1999, even though the current registrant is identified as Blue Arctic LLC and the original registrant appears to have been Fusion3k Designs.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 3.7, states:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
This consensus view has been adopted in at least a few decisions that have referred to the concept of a “beneficial owner” of a domain name, including Intellogy Solutions, LLC v. Schmidt, D2009-1244 (WIPO Dec. 24, 2009).  In that case, the panel found that a “transfer did not effect any material change in the beneficial ownership of the domain name” given the relationship that one individual had to both registrants, including serving as a sole proprietor “doing business as” one registrant and as CEO of another registrant.
The beneficial owner concept also arose in Justin.tv, Inc. v. Amador Holdings Corp, FA 1436777 (Nat. Arb. Forum May 17, 2012).  There, the panel said:
When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name . . . [but] [t]he strictness of the rule may be relaxed where a respondent can demonstrate that there has been no change in beneficial ownership between initial date of registration and last transfer. 
Although the panel in Justin.tv refused to accept that the current registrant of the disputed domain name had been the beneficial owner since its creation, this refusal was based in part on the presence of “various registrants” through the years, the “repeated use of privacy services” and [s]kepticism at th[e] [Respondent’s] explanation . . . invited by the copycat nature of the Respondent’s website.”
Similarly, in Int’l Truck Intellectual Prop. Co., LLC v. B, D2011-0599 (WIPO June 7, 2011), “the Respondent allege[d] that it has always been the underlying owner of the disputed domain name.”  But, the panel refused to accept this because “the evidence of record does not clearly establish an unbroken chain of underlying ownership” and “[t]here is in fact scant evidence in the record regarding the original registrant’s actual or intended use of this disputed domain name.”
Despite these mixed outcomes, the WIPO Overview 2.0 and the decisions cited above seem consistent on the following: With adequate explanation and in the absence of efforts to conceal a domain name registrant’s identity, the current registrant of a domain name may be considered to have been the beneficial owner of the domain name since its creation date, despite changes in the WHOIS record.  This Panel adopts this view, although it cautions that the rule should be applied only in narrow circumstances where the explanation is not unbelievable and is supported by appropriate evidence.
In light of the above, this Panel finds that the Respondent in this proceeding, Blue Arctic LLC, has been the beneficial owner of the Disputed Domain Name since it was created on February 7, 1999.
Accordingly, the Panel must determine whether the Disputed Domain Name “has been registered” in bad faith when registration occurred on February 7, 1999, despite the Respondent’s subsequent activities. See, e.g., RapidShare AG v. Ilya, D2010-1105 (WIPO Aug. 17, 2010) (“[T]he Complainants have failed to show that there was registration in bad faith”).
It is unclear whether, on February 7, 1999, Complainant had rights in the GOOGLE trademark.  For example, although the Complaint states that “Google has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997,” Complainant apparently did not own any trademark registrations for the mark on February 7, 1999, and Complainant had received only limited media attention by that time.
In any event, regardless of whether Complainant had obtained any common law trademark rights as of February 7, 1999, Respondent has provided a declaration clearly stating that it (as beneficial owner of the Disputed Domain through registration by Mr. Neuman) registered the Disputed Domain Name not “due to the existence of Google.com or the Complainant’s trademarks” but instead due to his relationship with a “young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.  See, e.g., Jumblatt v. SlantMedia, D2012-1011 (WIPO June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”); Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum ) (referring to “the very narrow scope of the UDRP procedure”).
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.  The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.”  Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002).
In any event, on the record before it, the Panel finds that Complainant has not prevailed in showing that the Disputed Domain Name “has been registered” in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oogle.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin, Panelists
Dated: July 25, 2012


[1] The concept of “beneficial owner” in this proceeding (where the registrant identified in the Whois database has changed prior to the filing of the complaint) is distinct from the concept of “beneficial owner” in cases in which a complaint was filed against a privacy or proxy service (and the identity of the registrant changed after the filing of the complaint).  See, e.g., Baylor Univ. v. Domains by Proxy, Inc., FA. 1145651 (Nat. Arb. Forum Apr. 11, 2008).

Released October 11, 2011.

NATIONAL ARBITRATION FORUM

DECISION

Google Inc. v. Goggle.com, Inc.
Claim Number: FA1108001403690

PARTIES
Complainant is Google, Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Goggle.com, Inc. (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Ontario, Canada.

REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are registered with ENOM, INC., registered with NETWORK SOLUTIONS, LLC., and registered with Domain Name Inc.

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

David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair.

PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.

On August 17, 2011, ENOM, INC. confirmed to the National Arbitration Forum that the domain name 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 disputes brought by third parties in accordance with the Policy.

On August 18, 2011, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 18, 2011, Domain Name Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Domain Name Inc. and that Respondent is the current registrant of the name. Domain Name Inc. has verified that Respondent is bound by the Domain Name Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected], [email protected], and [email protected] Also on August 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on September 13, 2011.

Complainant submitted an Additional Submission on September 19, 2011 in compliance with Supplemental Rule 7. Respondent submitted an Additional Submission on September 21, 2011 in compliance with Supplemental Rule 7.

On September 27, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair.

RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that it began operating under the GOOGLE name and mark in 1997. Complainant alleges that it uses its GOOGLE mark for its search engine and other Internet related services through its official domain name and website. Complainant presents numerous trademark registrations for its GOOGLE mark that it owns with governmental trademark authorities worldwide. Below is a sampling of such registrations:

United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,806,075 registered January 20, 2004);
IP Australia (“IPA”) (Reg. No. 1,049,124 registered April 4, 2005);
Barbados Corporate Affairs and Intellectual Property Office (“CAIPO”) (Reg. No. 81/20986 registered January 19, 2007); and
Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA539,576 registered January 12, 2001).

Complainant states that it had previously filed a UDRP proceeding against the original registrant of the disputed domain names. Complainant states that the parties entered into a confidential settlement agreement and the proceeding was dismissed. Complainant further states that since the domain names have been subsequently transferred to a third-party with whom it has no prior dealings, the agreement was not set forth in the Complaint. Those trademark rights, in any event, predate the transfer to Respondent.

Complainant contends that the disputed domain names are confusingly similar to Complainant’s GOOGLE mark. Those domain names contain a misspelled version of the GOOGLE mark where the domain names simply replace the letter “o” with the letter “g” and add a generic top-level domain (“gTLD”).

Complainant contends that it has not authorized Respondent to use or register the disputed domain names. Further, Complainant argues that Respondent is not commonly known by the disputed domain names even though the WHOIS information indicates that the registrant is “Goggle.com, Inc.” because an Internet search does not return any results for that company name as a legitimate business.

Complainant further argues that Respondent cannot claim to be offering legitimate goods and services through the domain names because it is diverting Internet users to a website that intends to copy the look and feel of Complainant’s website and deceiving users into signing up for expensive text messaging plans. Complainant contends that such use is invariably a “phishing” scam in which Respondent receives the personal and financial information of unsuspecting Internet users, and turns around to turn a profit with such information. Further, Complainant submits screen shot evidence to show that the website resolving from the domain name looks and feels just like Complainant’s official website while using a close variation of Complainant’s logos.

Complainant alleges that Respondent gained possession of the disputed domain names in 2007 or early 2008. Complainant argues that Respondent acquired the domain names in order to effectuate some kind of phishing scheme in which Internet users are made offers for devices such as an “iPad 2” so long as they give personal information and sign up for text message plans for cellular phones.

Lastly, Complainant contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the GOOGLE mark.

B. Respondent
Respondent states that

[T]he Complainant has failed to disclose that it entered into a Co-existence Agreement which entitled the Respondent to register and use the disputed domain names subject to certain terms and conditions which were complied with

Respondent asserts that it purchased and registered the domain names in good faith and on reliance of the Co-existence Agreement. Respondent attaches the Co-existence Agreement (between Complainant and Knowledge Associates, the original registrant) and a Purchase and Assignment Agreement2 (between the original registrant and a company identified as 1158860 Alberta, Ltd).

Further, Respondent submits a letter, which was sent to Complainant before the purchase giving Complainant the right of first refusal as required under the terms of the Co-existence Agreement. Respondent states that it purchased the domain names from the original registrant based upon the Co-existence Agreement that was expressly placed within the Purchase and Assignment agreement, and that it has followed the required sections of that agreement. Lastly, Respondent states that the very terms of the Co-existence Agreement expressly and specifically contemplated such a future sale of the domain names and permitted such, so long as certain aspects of the agreement were also agreed to by the new purchaser.

Respondent argues that the domain names all contain the separate and unique term “goggle,” and cannot be found to be confusingly similar to Complainant’s good mark. Further, Respondent references the Co-existence Agreement that states, “the word goggle will not be considered as a misspelling of the word google.”

Respondent argues that the term “goggle” of the domain names is a real and separate word from Complainant’s mark, therefore permitting the Panel to find that the domain names are not confusingly similar to Complainant’s mark.

Respondent also references the Complaint that states that “the manner in which Respondent is using the Domain Names” is the issue here. Respondent contends that such a statement is an admission by Complainant that the domain names are not similar to the GOOGLE mark, and that Complainant is trying to prove confusing similarity by bringing in Respondent’s use of the domain name instead of an objective analysis of the mark’s and the domain names’ similarities.

Respondent argues that, contrary to Complainant’s assertions, it is in fact known as “Goggle” because its corporate name is “Goggle.com, Inc.,” and that it has carried out business under this name for nearly four years. Respondent submits its corporate registration as part of its annexes to show that it is in fact registered as a business under the “Goggle.com, Inc.” name. Respondent further notes that its banking information is under the “Goggle.com Inc.” name and that it receives all payments from third-party advertisers under its corporate name.

Respondent contends that it is using the disputed domain names in the same manner as the previous registrant did for advertising and marketing solicitations. Respondent argues that such uses were known, accepted, and condoned by Complainant before it signed the Co-existence Agreement with the prior registrant. Respondent notes that it is able to conduct the same type of business activity under the disputed domain names because the Co-existence Agreement that Complainant signed contemplated such use by future purchasers.

Respondent contends that Complainant’s recent objection about the recent use of “an arguably similar graphic logo” does not nullify Respondent’s long-standing use of the domain names for its advertising and marketing solicitations. Respondent also states that it removed the allegedly infringing logo from its website since that time, and that it has only been used for a short period of time. Respondent maintains that it has not violated the terms of the Co-existence Agreement, and that it has rights in the domain names.

Respondent also argues that the term “goggle” of the disputed domain names is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain names, of its rights to use those names.

Respondent contends that Complainant

buried the fact of the existence of the Co-existence Agreement. The only reference to the fact of its existence was hidden away in the only footnote to its entire 15-page Complaint.

Respondent notes that the terms of the Co-existence Agreement were all followed, and that Complainant had the right to purchase the domain names per that agreement and chose to let Respondent register them instead. Respondent further notes that Complainant’s possible motive in bringing this UDRP claim is that it has recently launched a new mobile service called “Google Goggles,” and wishes to use the domain names for its own gain. Therefore, Respondent contends that Complainant knew at the time of filing this Complaint that Respondent did not register or use the domain names in bad faith.

C. Additional Submissions
1. Complainant
Complainant contends that the two agreements referred to by Respondent have no bearing on the resolution of this dispute. First, there is no evidence that the agreements create and govern a relationship between Complainant and Respondent. Second, Respondent is a bad faith actor who acquired the disputed domain names with a clear intent to profit from and associate them with the Google mark and who is using the domain names in a fraudulent manner.

Complainant asserts that merely using a corporate name identical to one of the disputed domain names is not sufficient to establish that Respondent is commonly known by the disputed domain names. Complainant further argues that Respondent even admits that the only reason it established its corporate name is for owning the domain names.

Complainant contends that Respondent’s assertion of the proposition that it can use a generic term in a domain name to establish a legitimate interest therein is not accepted. Complainant contends that Respondent’s cited cases for such a proposition all deal with a descriptive term that is being used for its descriptive qualities, which is not the case here. Complainant asserts that Respondent is not posting any content related to eye wear or goggles, but is using the domain names to defraud Internet users who believe they may be on Complainant’s website.

Complainant notes that uses of confusingly similar domain names for “survey sites” are part of growing schemes to generate revenue. Complainant argues that Respondent has increasingly used the domain name and the content within its website to confuse Internet users into believing that Complainant is associated with the domain name.

Complainant notes that Respondent

even adopted a logo so closely similar to Google’s famous mark (and well known ‘doodles’) that it gave rise to numerous complaints by Google’s consumers who had been deceived into believing Respondent’s website was affiliated with Google.

Complainant argues that Respondent’s use of the domain names to commercially profit in such a manner is evidence that Respondent registered and is using the domain names in bad faith.

Complainant argues that Respondent’s allegation of reverse domain name hijacking is “no more than a desperate effort by Respondent to maintain its illegal and highly profitable enterprise.” Further, Complainant asserts that Respondent cannot bring in the previous agreement that Complainant had with the original registrant because it was not a party to such an agreement, and either way the agreement is confidential in nature and should not be disclosed.

2. Respondent
Respondent contends that there is no provision in the Policy for a “reply.” Rule 12 confines the submission of additional material beyond the Complainant and the Response to submissions provided at a Panel’s request only. Supplemental Rule 7, providing for the filing of Additional Submissions, must be viewed in accordance with the National Arbitration Forum’s statement on its website that it is up to the Panel, in accordance with Rule 10, to decide whether such Additional Submissions will be considered.

Respondent contends that Complainant does not even mention its un-exercised right of first refusal or its status as a Third Party Beneficiary under the Co-existence Agreement. Because Respondent has not breached the Co-existence Agreement, Complainant has no recourse thereunder and is thus proceeding under the Policy.

Respondent contends that it is an Assignee and permitted beneficiary under the original Co-existence Agreement above thereby granting Respondent standing to bring in the contract. Respondent attaches an Assignment and Assumption Agreement (between 1158860 Alberta. Ltd. and the Respondent).

Therefore, Respondent contends that this contract needs to be interpreted, which falls outside the scope of the UDRP.

FINDINGS
Admissibility of Additional Submissions
As correctly noted by Respondent, there is a conflict between Rule 12 (which allows the Panel to request further statements and documents beyond the Complaint and Response) and Supplemental Rule 7 (which provides for the automatic fee-based filing of Additional Submissions). As in previous cases, this conflict is usually resolved by the Panel, which has the discretion under Rule 10(d) to “determine the admissibility… of the evidence.”

In this matter, the Panel finds that the Additional Submissions help the Panel in its resolution of the matter and therefore has considered them, at least to the extent that they contain material that could not reasonably have been included in the Parties’ initial submissions.

Policy
The Panel declines jurisdiction in this matter, as discussed below, and therefore makes no findings.

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.”

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.

The evidence and arguments relied on by the Parties, relating to the Policy, are extensive and ably done.

But, the Panel finds that this case is foremost a business and/or contractual dispute between two companies that falls outside the scope of the Policy.

In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.

The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. … The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

The GOOGLE mark in this case is the very one that is the subject of the Co-existence Agreement. The disputed domain names in this case appear to be the very ones that are the subject of the Co-existence Agreement.

That agreement set forth the rights and obligations of the original registrant and Complainant regarding the Google Mark and the disputed domain names. Those rights include a consent by Complainant to the original registrant’s ownership and/or use of the domain names therein on the terms and conditions of the Co-existence Agreement. This consent appears to continue beyond the effective date of that agreement.

Respondent states that it is entitled to the rights of the original registrant (by reason of either being an assignee or a third party beneficiary), and that it is complying with the obligations of the original registrant.

Complainant in essence says that the Co-existence Agreement is irrelevant to its present claim under the Policy, and that the agreement is confidential.

The Purchase and Sale Agreement purports to transfer the rights and obligations of the original registrant under the Co-existence Agreement to a third party. The Assignment and Assumption Agreement purports to transfer those rights and obligations to the Respondent. The Co-existence Agreement includes a provision restricting public statements by both parties.

Does the Co-existence Agreement apply to the disputed domain names? Does Respondent stand in the shoes of the original registrant? Does the consent of Complainant extend in time to the current actions of Respondent and in person to the Respondent? Has the Respondent complied with the obligations of the original registrant? Does the “no public statements” provision in the Co-existence Agreement prohibit its disclosure or use as a defense by Respondent?

These are factual and legal issues that go far beyond the scope of the Policy.

These are factual and legal issues that must be resolved before any consideration of confusing similarity, legitimate rights and interest, and bad faith under the Policy can be made.

And they are issues of considerable complexity, best addressed by a court or other body equipped to take and consider evidence related to their resolution.

DECISION
The Panel declines jurisdiction over this Complaint and over Respondent’s related claim of Reverse Domain Name Hijacking.

The case is thus dismissed.

David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair Dated: October 11, 2012


Just heard from the National Arbitration Forum that my clients won a great domain name dispute over GROOVLE.COM. Google had complained that my clients were “cybersquatters”. The unanimous three distinguished three member panel disagreed. You can read the decision here.

Congrats to Groovle.com! This was one of those rare UDRP cases where the Panel didn’t even have to consider the second and third prongs of the three-part UDRP test (legitimate interest and good faith registration and use). The Panel deserves a lot of credit here for being decisive in its appreciation for the substantial difference between Google and Groovle. As a UDRP lawyer, I can say that this was a real groovy case, and only the second case that Google ever lost; the first one was Froogle.com…


Yet another case of someone going to court to get the ID's of anonymous emailers/bloggers/posters. I was interviewed on CBC's The National on one of these cases.

This is starting to be a regular occurance...

It may start happening so much that Google establishes its own "court system"...all online...

Would be like an ICANN arbitration  over a domain name dispute at the National Arbitration Forum or WIPO. I think it would work and would save them a lot of money and headache by avoiding going to court in many cases...

Domain name lawyers are used to this kind of arbitration for online legal issues, and I could see how a domain name attorney could easily adapt to this kind of Internet law case.