Google suffers rare defeat in UDRP proceedings

International
In Google Inc v 207 Media (Case FA0911001293500, December 24 2009), a National Arbitration Forum panel has denied search engine giant Google Inc's complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), concluding that the domain name 'groovle.com' was not confusingly similar with the GOOGLE mark.
 
Google operates one of the largest and best known internet search engines in association with the trademark GOOGLE. Google’s website, located at 'google.com', is one of the Internet’s most popular destinations and offers users a range of goods and services in addition to internet searching. Google also owns numerous trademark registrations around the world for its GOOGLE mark, which has been in use since well before May 13 2003.
 
The respondent, 207 Media, is a Canadian company engaged in web development and marketing. The domain name 'groovle.com' was registered by the respondent in June 2007. However, the domain name’s history dates back much further, as 'groovle.com' was first registered on or about May 13 2003. Immediately upon registering the domain name, the respondent began using it to provide internet users custom website development services. As part of that service, customers of the respondent would view advertisements provided by Google.
 
In November 2009 Google began proceedings under the UDRP in respect of the 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 domain name was registered and is being used in bad faith.
Google alleged that the domain name was nearly identical or confusingly similar to its GOOGLE mark. Google also noted that the layout of the customized websites generated by the respondent resembled the layout of the Google homepage. In addition, the website associated with the domain name displayed many references to Google. The panel was asked to conclude that the respondent was using the GOOGLE mark to attract internet users to its own website for commercial gain. 
 
The respondent countered that the spelling of 'groovle.com' was not a mere misspelling of the GOOGLE mark, but instead had its provenance in the words 'groove' and 'groovy'. The respondent also relied on its legitimate interest in the business carried on at the website associated with the domain name, and argued that Google had failed to establish bad faith. In any event, the respondent claimed that if Google had a complaint about trademark infringement, a UDRP proceeding was not the appropriate forum to deal with it.
 
Google was likely emboldened by its impressive track record in UDRP proceedings. The respondent noted that Google was the complainant in 65 separate UDRP decisions and had been successful in all but one, a dispute involving the domain name 'froogles.com' (Google Inc v Wolfe (Case FA 275419)).
 
The panel ultimately concluded that 'groovle.com' was sufficiently different from the GOOGLE mark and could be distinguished based on sound, appearance, meaning and connotation. The panel agreed with the decision in Google v Wolfe that dissimilar letters in the disputed domain name were sufficient to make it distinguishable.
 
Having concluded that 'groovle.com' was not confusingly similar to the GOOGLE mark, the panel declined to analyze the remaining factors and rejected Google’s complaint.
 
Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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