Google obtains transfer of 'glass' domain name under UDRP
Search engine giant Google Inc has been successful in its effort to secure the rights to the domain name 'glassforsnap.com'. In Google Inc v Private Protection Co Ltd (Case No FA1407001568361, August 8 2014), a National Arbitration Forum panel accepted Google’s complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), concluding that the domain name 'glassforsnap.com' was confusingly similar with the trademark GLASS.
In April 2012 Google announced its work on a new wearable computer device, worn on the head. In June 2012 the Google Glass product was first demonstrated to the public. Google owns numerous trademark registrations around the world for the trademark GLASS, including a registration in the United States which issued in June 2010.
The respondent, whose identity was protected through a third-party privacy protection service, registered 'glassforsnap.com' on March 21 2014. The domain name resolved to a website which falsely informed internet users that they had “won a Google Glass from Snapchat”. The website also offered internet users a chance to participate in Google’s Glass Explorer programme in exchange for downloading and installing one of the respondent’s apps. When the internet user clicked the 'OK' button to 'claim' the device, the user was directed to a website that prominently featured Google’s GLASS trademark and an image of the Google Glass product. The website also requested that the internet user provide certain personal identifying information.
In July 2014 Google began a proceeding under the UDRP in respect of the disputed domain name. A complainant in a UDRP proceeding must establish that:
- the domain name is identical, or confusingly similar, to a trademark in which the complainant has rights;
- the registrant does not have any rights or legitimate interests in the domain name; and
- the registrant registered the domain name, and is using it, in bad faith.
A single panel under the UDRP had no difficulty in concluding that the disputed domain name was confusingly similar to the GLASS trademark. The panel found that merely adding the terms 'for' and 'snap', as well as the gTLD '.com', did not sufficiently distinguish the domain name from the GLASS mark. Interestingly, while the panel noted that 'snap' is an abbreviation for 'snap shot', as well as refers to impermanent photo 'snaps' taken with the Snapchat app, the panel did not deal at all with whether the owners of the Snapchat app could or should have any rights in the domain name, or whether transferring the domain name to Google was improper in view of the presence of the SNAP trademark as part of the domain name.
The panel also had no trouble concluding that the respondent had no legitimate interest in the domain name, noting that he had used the domain name in connection with a website which attempted to appear as Google for financial gain. The panel also noted that there was no evidence that the respondent was generally known by the name Glass for Snap.
Regarding bad faith, the panel had no trouble concluding that the respondent had registered and was using the domain name in bad faith. Specifically, the panel noted that the domain name was used to induce internet users into downloading and installing apps which were disruptive to Google’s business and had the potential to seriously damage Google’s reputation and goodwill.
Clearly, the panel was influenced by the offensive and fraudulent activity which was occurring on the website associated with the domain name, even where the domain name was comprised of three ordinary words.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto
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