Recent Domain Name Disputes

Google Inc v www.googler.com.au

A recent domain name was arbitrated and decided by the Administrative Panel of WIPO’s Arbitration and Mediation Center on 6 October 2008 between Google Inc v Jan Jeltes in relation to the domain name www.googler.com.au.

The complainant, Google Inc is the owner of several Australian trade marks and is widely recognized as the world’s leading search engine as well as one of the most popular brands in the world. The Complainant contended that “google” is an invented, distinctive word which the Respondent would not have legitimately chosen as the major element of its domain name unless it was attempting to trade off the Complainant’s rights. The Complainant also argued that its reputation in GOOGLE was so widespread that it is inconceivable that the Respondent did not have actual notice of the Complainant’s rights in the trade mark GOOGLE at the time of registering the disputed domain name.

The respondent, who operates a blog and current affairs website, argued that the Complainant did not provide any proof to satisfy the conditions of paragraph 4(a)(i) of the .au Dispute Resolution Policy and hence could not succeed.

.au Dispute Resolution Policy (auDRP) (2008-01)

4a of the Policy provides that in order to succeed, the Complainant must prove each of the following three tests that:

1. the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the domain name has been registered or subsequently used in bad faith.

WIPO’s findings

1. In relation to the similarity test, the Panel found that the Complainant had registered trade mark rights in Australia for the term GOOGLE and that the disputed domain name contained the Complainant’s registered trade mark in its entirety, which in many cases is enough to create a likelihood of confusion between the domain name and the trade mark. The only difference between the Complainant’s trade mark and the disputed domain name is the addition of the single letter “r”. The term “googler” was, in the Panel’s view, confusingly similar to “Google”. The Panel further noted that the GOOGLE trade mark was extremely well-known.
2. The Respondent argued that he held legitimate rights and interests to the disputed domain because he used the disputed domain name for research purposes and general interest. The Panel held that the Respondent’s interests could not be legitimate if he selected the disputed domain name because of its similarity to the Complainant’s mark and likely popularity with Internet users. Further, even though the domain name was predominantly a blog website, there were advertising opportunities available on it, similar to the Complainant’s search engine site. It was clear that the Respondent was aware of the Complainant’s GOOGLE marks, as he had written to the Complainant asking if they would object to his registration of various “googler” domain names. The Panel found that the Respondent had no rights or legitimate interests in the disputed domain name.
3. In relation to the “bad faith” test, the Panel agreed with the Complainant’s argument that many Internet users would think the disputed domain name is a sub-brand of Google’s operations. The Panel was not persuaded by the Respondent’s contention that “google” is a common, well known term in the context of the content of the Respondent’s website blog. The Panel doubted that the Respondent chose the disputed domain name for any reason other than an intention to trade off the Complainant’s trade mark.

Based on the evidence provided to it, the Panel found that the Respondent intentionally attempted to attract, for commercial gain, internet users to its web site by creating a likelihood of confusion with the Complainant’s mark, leading users to believe that an affiliation with the Complainant existed. The Panel ordered the domain name googler.com.au be transferred to the Complainant.

Emirates, Emirates Group v Bluecom Consulting Group

By contrast, an earlier decision of the Panel in the decision of Emirates, Emirates Group (the official airline of the United Arab Emirates) v Bluecom Consulting Group Pty Ltd, which issued in April 2008, held that the Complainant, Emirates, Emirates Group did not establish the three grounds necessary for success.

Although the domain name www.emirates.com.au was identical or confusingly similar to the Complainant’s trade mark EMIRATES, the Panel held that the Complainant could not establish that the Respondent did not have a legitimate right or interest in the domain name. This was due to the fact that the Respondent was using the domain name emirates.com.au as a website directed to Australians about travel to the United Arab Emirates and also to support a business of importing and distributing Dead Sea salt under the name Emirates Salt. Further, the Panel found that it was not inapt to refer to the United Arab Emirates as “the Emirates”.

EKM is able to assist and advise companies on the registration of domain names in Australia and internationally in conjunction with the registration of their trade marks. We are also able to assist with trade mark searches to ensure that the domain name selected does not infringe upon any third registered trade mark rights. If you have any queries, please do not hesitate to contact Brian Goldberg at brian.goldberg@ekmpatent.com.