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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. PSingh Sabharwal

Case No. D2009-1300

1. The Parties

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

The Respondent is PSingh Sabharwal, Saab Group Inc. of New Rochelle, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <googleinstores.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2009. On October 2, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On October 9, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Response was filed with the Center on November 6, 2009. Related correspondence was received by the Center from the Respondent on October 13, 2009, which has also been treated as part of the Response.

The Center appointed James A. Barker as the sole panelist in this matter on November 20, 2009. 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 was founded in 1997 and operates the world`s largest search engine. The Complainant is well-known and operates a website at "www.google.com". The Complainant has registered over 250 other domain names incorporating its registered GOOGLE mark. Among its registrations in other jurisdictions, the Complainant`s mark was first registered in the United States of America in September 2004 on the principal register of the USPTO. That mark has a claimed first use in commerce in 1997, in relation to computer services. The Complainant also provides evidence of having registered its mark in India in 1999.

The Complainant`s primary website generates revenue through on-line advertising. The products and services of the Complainant reach more than 150 countries, including the United States of America.

Further information about the Complainant is detailed in past cases under the Policy, in which the Complainant was successful in having disputed domain names transferred to it. Those cases include e.g.: Google v. Abercrombie 1, NAF Case No. 0101579; Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Google Inc. v. Jeltes Consulting / N. Tea Pty Ltd., WIPO Case No. D2008-0994; Google Inc. v. txtcorp, WIPO Case No. D2009-0453; Google Inc. v. Advertising services Saigon Vietnam, WIPO Case No. D2009-1157; Google Inc. v. Thilak Raj, Net Jobs, WIPO Case No. D2009-0033.

The disputed domain name was created on January 15, 2009 (as indicated in the WhoIs details). The Complainant provided evidence that, on October 4, 2009, the disputed domain name reverted to a website used for advertising products under the name "Google Adsense Stores". The website contains various references to the Complainant and features snapshots of its mark. The website contains statements such as, "Now Google search engine is money making machine!!!"; "In order to make money from google, you should have one acceptable website. We would provide you with a website, so that you can register yourself with google. The website would be similar to the following site as listed below.."; and "Google places ads on your website and pays". The website also contains indications of an Indian connection. For example, it contains advertisements for "Saab Group India", and "India on Web", as well as statements such as "Meet our distributors through out India" and "Binary Earning of more than Rs. 18 Lakhs per cycle of these Plans".

The Respondent provides evidence that, on October 31, 2009, it filed a civil suit in connection with the disputed domain name, in Patiala House Courts, New Delhi. The Respondent`s evidence indicates that the matter is listed for hearing on January 11, 2010.

5. Parties` Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE mark, since its mark is entirely incorporated in the disputed domain name and forms the distinctive element of it.

The Complainant alleges that the Respondent has no rights or legitimate interests. The Respondent is not authorized by the Complainant to use its GOOGLE mark. There is no credible legitimate reason for the Respondent to have acquired the disputed domain name. The nature of the Respondent`s use of the disputed domain name cannot constitute a legitimate interest.

The Complainant finally alleges that the disputed domain name was registered and has been used in bad faith, as described in paragraph 4(b)(iv) of the Policy. In support, the Complainant argues that its mark is a unique coined word which has acquired significant goodwill. The registration of the disputed domain name significantly post-dates the Complainant`s use and registration of its mark. The Respondent has made wide reference to the Complainant on the Respondent`s website. It is extremely unlikely that the Respondent registered the disputed domain name independently, and has failed to respond to demands from the Complainant to transfer it.

B. Respondent

The Respondent refutes the allegations against it. The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant`s mark. The Respondent does not explicitly address the allegations that it has no rights or legitimate interests in the disputed domain name.

The Respondent denies that it has registered the disputed domain name in bad faith. The Respondent points to the website prominently identifying SAAB Group India. The Respondent also denies that it is disrupting the business of the Complainant but, on the contrary, is bringing revenue to the Complainant through its advertisements. The Respondent also says that it has had previous contact with the Complainant: "In the past, our GIS portal had developed virus. Google.Com rectified the virus and gave us valuable advisory for future maintenance. The correspondence is in record with us. And at no stage Google.Com has raised any reservation for the domain name use." The Respondent, lastly, points out that various third parties have also registered domain names containing the Complainant`s mark.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These elements are discussed as follows, immediately after a consideration of the effect of the Respondent`s filing of a related civil action in India (referred to above).

A. Concurrent court proceedings

The Respondent has, after the filing of the Complainant, filed a civil action against the Complainant in India. In this connection the Respondent requests that the Complainant withdraw the Complaint, and refers to paragraph 4(k) of the Policy. That paragraph provides in short that this administrative proceeding does not prevent either party from submitting the dispute to a court of competent jurisdiction. The Complainant did not withdraw the Complaint.

The Respondent also requested that these proceedings be stayed because of the filed court proceedings, and the Complainant directed to appear before the Indian Court. The Panel has no power to make such a direction. The Respondent`s submission raises the issue of whether the Panel should exercise its discretion to suspend or terminate these proceedings under paragraph 18(a) of the Rules. Panels` views about exercising the discretion in paragraph 18(a) has been discussed by this Panel (in a 3-member decision) in Galley, Inc. v. Pride Marketing & Procurement / Richard`s Restaurant Supply, Inc., WIPO Case No. D2008-1285. Having regard to those views, this Panel does not consider that the circumstances of this case provide an appropriate basis for the exercise of that discretion. This Panel is unwilling to exercise the discretion set out in paragraph 18(a) for a vaguely defined action filed after the Complaint. The Respondent provided no evidence that it was genuinely considering court action against the Complainant before the filing of the Complaint, or that it had a genuine commercial dispute with the Complainant. As such, the Panel considers that the filing of the court proceeding is more likely an attempt to frustrate the application of the Policy. Such a motivation cannot be a proper basis for the Panel to exercise its discretion under paragraph 18(a) of the Policy.

B. Identical or Confusingly Similar

The Complainant clearly has rights in a mark. Those rights are well-known and have been recognized as such in past panel decisions.

The Panel also considers that the disputed domain name is confusingly similar to the Complainant`s mark. The Respondent`s contention otherwise is not maintainable. The Complainant`s mark is wholly incorporated in the disputed domain name. This factor, together with the fame of the Complainant`s mark, was considered a sufficient basis for a finding under this ground in Google Inc. v. txtcorp, WIPO Case No. D2009-0453. This Panel takes a similar approach. Reinforcing this conclusion is the fact that the Complainant`s mark clearly is the subject of the phrase which the disputed domain name comprises.

The Complainant has therefore established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The consensus of previous decisions under the Policy is that a complainant establishes this element by making out a prima facie case against the Respondent. See the Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. Here, the Complainant has sufficiently made out such a case. The burden then shifts to the Respondent to rebut the case against it. The Panel considers that the Respondent has not rebutted that case.

There is little evidence in the case file that the Respondent has a right or legitimate interest in respect of the disputed domain name. The Respondent makes a number of claims. It claims that the Complainant has previously supported it and raised no objection to its use of the disputed domain name. But the Respondent provides no evidence of this and, having regard to the filing of the Complaint, there is no basis for the Panel to give much credence to that claim. The Respondent refers to third parties having registered domain names that incorporate the Complainant`s mark. But the rights of third parties (even if established, which they are not) say nothing about whether the Respondent has rights. The Respondent also claims that the Complainant receives revenue from the Respondent`s activities. No such evidence is provided. And even if the Complainant did receive such revenue, that does little to show the Respondent itself has a right or legitimate interest in the disputed domain name.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

A finding of bad faith may relevantly be made if the Respondent was aware of the Complainant and registered the disputed domain name to exploit the Complainant`s mark. The Panel has little doubt that this is what the Respondent has done.

In a previous case involving the Complainant and a respondent, as here, with an apparent connection to India, the then panel found bad faith, having regard to "the high global reputation of the Complainant especially in the Internet and its numerous branches world wide and also in India…and the fact that the Respondent`s website explicitly makes references to the Complainant`s services...". The circumstances here are similar. The Panel has also had regard to the fact that the Complainant has been successful in all of the cases it has initiated decided by WIPO UDRP panelists. The Panel does not consider that there is anything in the circumstances of this case which justify a different conclusion.

Mention should also be made of the Respondent`s argument that its website prominently displays its name. The implication is that the Respondent is making it clear that it, rather than the Complainant, is the owner of the website. However, the Panel does not think things are that clear. The Respondent`s website mentions the name of the Respondent, but also mentions others in equal measure. There is no clear disclaimer on the website. But then, even if there were, the established consensus of WIPO UDRP panels is that "The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant`s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest." Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.5.

The case file does not contain evidence that would credibly indicate good faith or a legitimate interest. As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <googleinstores.com> be transferred to the Complainant.


James A. Barker
Sole Panelist

Dated: December 4, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-1300.html

 

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