Google’s Fruitless Attempts To Secure

Last August, Google filed a complaint with the National Arbitration Forum to finally get a hold of the domains names, and (don’t visit these). Yesterday, the organization dismissed its claims.

That doesn’t mean the owner of the domain names – a shady company called Inc. – should break out the champagne just yet, though.

The Internet search and advertising giant’s complaint in itself is interesting. Apparently, Google isn’t merely claiming that the disputed domain names are ‘confusingly similar’ to its trademark and that they currently lead to a website that hosts a phishing scam, but also that it had previously entered into a confidential settlement agreement with the former owner of the domain names.

I’m lifting the relevant parts from the Forum’s decision (which you can also find here) and copying them below, with emphasis added. Note that the complainant is Google; the respondent is Inc:

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 “, 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.

Goggle Inc., meanwhile, asserts that it purchased the domain names in good faith and on reliance of a previously signed ‘Co-existence Agreement’, which would mean rights transferred to the company when they bought the domain names.

They also state that ‘goggle’ is a real word that has nothing to do with Google’s trademark, and that Google “does not have an exclusive monopoly on the term on the Internet”. They also note that Google’s possible motive in bringing this UDRP claim is “that it has recently launched a new mobile service called Google Goggles”. From the NAF decision (emphasis mine):

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 Agreement (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 “, 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 “, Inc.” name. Respondent further notes that its banking information is under the “ 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.

The three-person National Arbitration Forum panel that made the decision to dismiss the case aren’t necessarily agreeing with either party. Rather, the panel says it declines jurisdiction in the matter and suggests national courts are better equipped to handle such ‘contractual or business disputes’.

I suspect Google will indeed be taking this to court next.

To be continued, sadly.