Google, Inc. v. Richard Wolfe
Claim Number: FA0405000275419
Complainant is Google, Inc. (“Complainant”), represented by Rose A. Hagan, 1600 Amphitheatre Parkway, Building 41, Mountain View, CA 94043. Respondent is Richard Wolfe (“Respondent”), represented by Stephen L. Humphrey of Cameron & Hornbostel LLP, 818 Connecticut Avenue NW, Washington, DC 20006.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <froogles.com>, registered with Go Daddy Software, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as a Panelist in this proceeding.
Hon. Charles K. McCotter, Jr., (Ret.), Hon. John J. Upchurch, (Ret.) and Hon. Richard B. Wickersham, (Ret.), as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.
On May 21, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <froogles.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 June 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 23, 2004 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on June 24, 2004.
Complainant filed an Additional Submission and Respondent replied thereto, which were fully reviewed and considered by Panelists.
On July 8, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Charles K. McCotter, Jr., (Ret.), Hon. John J. Upchurch, (Ret.) and Hon. Richard B. Wickersham, (Ret.), as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Google was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, Google has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at <google.com>.
Currently, the GOOGLE search engine has an index of over 4 billion web pages. The GOOGLE search engine offers Internet users an easy-to-use interface, advanced search technology, and a comprehensive array of search tools. In addition, the GOOGLE search engine allows Internet users to search for and find content in many different languages; access stock quotes, maps, and news headlines; access telephone book listings for every city in the United States; and retrieve more than 22 millions .PDF documents.
Google’s website is one of the most popular destinations on the Internet. For example, Nielsen NetRankings ranked Google as number 5 of the Top 25 Web Properties for the month of March 2003.
Google also offers co-branded web search solutions for information content providers, and has partnerships with 130 companies in more than 30 different countries, including some of the Internet’s most prominent players.
Google offers software and hardware products. The GOOGLE toolbar is a free, downloadable software program which appears as a toolbar along with the Internet Explorer toolbar and which allows users to quickly and easily use Google’s search services from any website location, without having to return to Google’s home page to begin another search. The GOOGLE search appliance is an integrated software and hardware product, marketed to both small and large companies, that provides Google’s search services, including indexing, for use in internal corporate networks and intranets.
The GOOGLE mark identifies Google’s award-winning, propriety, and unique search services, search engine technology, and associated services. Having been widely promoted among members of the general consuming public since 1997, and having exclusively identified Google, Google’s GOOGLE mark and name symbolize the tremendous goodwill associated with Google and are property rights of incalculable value. Furthermore, due to widespread and substantial international use, Google’s GOOGLE mark and name have become famous.
Google is the owner of United States Trademark Registration No. 2,806,075 for the GOOGLE mark covering search and communication services in International Classes 38 and 42. Google is also the owner of U.S. trademark applications, including Application Serial No. 75/554,461 filed September 16, 1998, covering computer hardware and software in International Class 9.
Respondent in this case created and maintains a shopping website at <froogles.com>. The website seeks to attract “frugal” shoppers by offering a wide variety of quality merchandise at discounted or sale prices. Mr. Wolfe began planning his website in mid 2000, when Internet shopping was becoming increasingly popular. Since its inception, Mr. Wolfe has worked daily maintaining and improving the <froogles.com> website. As a result of Mr. Wolfe’s diligent efforts, today the <froogles.com> website comprises approximately 400 pages of product listings, information on product discounts, price comparisons, daily specials and promotions, and over one thousand links to approximately 700 different retailers. Mr. Wolfe receives commissions from retailers whose products are sold as a result of being included in the <froogles.com> website.
Mr. Wolfe chose the domain name at issue because it was a play on the word “frugal,” which was not available. Other considerations included were that the word is easy to spell, it has a nice “ring” to it, and because the “s” on the end of the word reminds him of well-known department stores. It has always been Mr. Wolfe’s intent and goal to create a self-sustaining, long-term Internet business with the <froogles.com> website.
In creating and maintaining his website, Mr. Wolfe has never sought to trade on the goodwill of any other company, including Google, or suggest any affiliation or association with Google. Nor has he ever offered the <froogles.com> domain name for sale or rental. Since launching his website over three years ago, Mr. Wolf has never received any complaint, inquiry or communication of any kind from Complainant, until this dispute arose.
It appears that the Complaint in this domain name dispute was filed because Mr. Wolfe filed a Notice of Opposition in Google’s pending application to register the mark FROOGLE in the United States Patent and Trademark Office (“PTO”). He filed the Notice of Opposition on March 24, 2004. Google had filed its application in the PTO on September 8, 2003 based on its intent to use the FROOGLE mark in offering a shopping service on the Internet.
Google’s filing of its Complaint in this action is an apparent effort to coerce Mr. Wolfe into withdrawing his opposition to Google’s application in the PTO. Indeed, in an email dated May 11, 2004, Google’s counsel represented that if Mr. Wolfe would withdraw his opposition to Google’s application to register its mark FROOGLE, then Google would not object to Mr. Wolfe continuing to operate his website at <froogles.com>. Google made it quite clear in its email that if Mr. Wolfe refused, Google would initiate proceedings to have his domain name taken from him and transferred to Google. Mr. Wolfe did refuse and Google responded by initiating this proceeding. Google has effectively engaged in Reverse Domain Name Hijacking.
C. Additional Submissions
Both Respondent and Complainant filed an Additional Submission, which was carefully reviewed by the Panel and duly considered.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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 Policy ¶ 4(a)(i).
The <froogles.com> domain name is not confusingly similar to Complainant’s GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant’s mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to Respondent's trademark "Club 18-30”); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000) (finding that the domain name at issue <copart.net> is not identical to nor substantially similar to the mark registered and used by Complainant, "CI Copart Inc. Salvage Auto Auctions").
In addition, Complainant has failed to provide evidence of Internet confusion and therefore has failed to fulfill its burden of proof. In the Response, Respondent has attached examples of other companies using the “oogle” in their domain names and trademarks. See B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001) (holding that Complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS).
Complainant has failed to satisfy Policy ¶ 4(a)(i).
Respondent contends that he has rights and legitimate interests in the <froogles.com> domain name because the domain name describes Respondent’s business. The Majority Panel concludes that Respondent’s business is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that Respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of Respondent’s services and the nature of Respondent’s services, was a bona fide use of the domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating ‘a bona fide offering of goods and services’”).
Furthermore, Complainant waited almost four years after Respondent registered the <froogles.com> domain name in December 2000 to challenge the domain name. See Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve the [domain name dispute.]”). The Complaint herein was filed after Mr. Wolfe filed a Notice of Opposition to Google’s pending application to register the mark FROOGLE in the United States Patent and Trademark Office.
Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Complainant’s delay in bringing a claim against Respondent infers that Respondent does not have the requisite bad faith pursuant to Policy ¶ 4(a)(iii). See New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that Respondent could not have registered the disputed domain name in bad faith where its registration came months before Complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the Panel).
Furthermore, Respondent did not register or use the domain name in bad faith since Respondent has rights or legitimate interests in the domain name. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).
Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Complainant has not engaged in Reverse Domain Name Hijacking by attempting to protect its GOOGLE trademark.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <froogles.com> domain name NOT be transferred from Respondent to Complainant and that Complainant’s Complaint be DISMISSED.
Hon. Charles K. McCotter, Jr. (Ret.), Panelist
Hon. John J. Upchurch, (Ret.)
Dated: July 18, 2004
DISSENTING OPINION OF THE HONORABLE RICHARD B. WICKERSHAM, (RET.)
Identical and/or Confusingly Similar Policy ¶ 4(a)(i).
Complainant asserts that it has established rights in the GOOGLE mark through registration of the mark with the United States Patent and Trademark Office (Reg. No. 2,806,075 issued January 20, 2004, filed September 16, 1999) and through several pending trademark applications. Complainant also holds various trademark registrations in countries that range from Argentina to Thailand. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications.).
Complainant contends that the <froogles.com> domain name is confusingly similar to Complainant’s GOOGLE mark. The only difference is the mere addition of the letters “f” and “r” and the plural “s,” which do not significantly distinguish the domain name from the mark. 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); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of Complainant’s services and those who were to view a web site provided by Respondent accessed through the contested domain name). I agree.
Complainant alleges that Respondent is appropriating Complainant’s mark in the disputed domain name in order to market goods and services similar to Complainant’s goods and services. I find that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods). I agree.
Given the WHOIS registration information, the Panel may infer that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). 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"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s GOOGLE mark and therefore Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). I agree.
Moreover, Complainant argues that Respondent’s <froogles.com> domain name causes Internet users to mistakenly believe that the disputed domain name is affiliated with Complainant. Complainant asserts that the initial user confusion that the domain name causes is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). I agree. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). I concur.
Furthermore, Complainant avers that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using the domain name, which is confusingly similar to Complainant’s mark, to compete with Complainant’s business. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites). Clearly our case!
I concur with the Majority Panel in finding that Complainant has not engaged in Reverse Domain Name Hijacking.
DISSENTING OPINION WITH FINDINGS
Having established all three elements required under the ICANN Policy, in my view, I find that relief should be GRANTED to Complainant.
The Opinion of Dissent is that the <froogles.com> domain name should be TRANSFERRED from Respondent to Complainant.
Hon. Richard B. Wickersham, (Ret.), Panelist
Dated: July 18, 2004