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Failure to Resolve Uncertainty Undermines Complainant’s Claim

To “oogle” (if “oogle” means “ogle”) is one thing, to “google” another. “Despite the Panel’s extreme suspicions about [the Respondent’s] explanation [for registering <oogle.com>]” it denied Google Inc.’s complaint in Google Inc. v. Blue Arctic LLC, FA1206001447355 (Nat. Arb. Forum July 25, 2012). Why? The first problem in assessing whether a domain name is identical or confusingly similar to a trademark is its composition. Respondent claims “oogle” is a variant of “ogle” which is a dictionary word. (My dictionary does not show “oogle” as a variant of “ogle”, which perhaps explains the Panel’s “extreme suspicion” about the Respondent’s explanation.) GOOGLE is an arbitrary sign; but “oogle” is not “google”, so it could arguably be similar but not confusingly so. This was (I think) an uncertainty that Google, Inc. failed (or was unable) to straighten out.

Of a complainant’s burden of proof the first requirement – proving that the disputed domain name is identical or confusingly similar to a trademark in which it has a right – is the easiest. Easiest because the complainant controls the evidence on the trademark issue. The first problem in assessing whether a domain name is identical or confusingly similar to a trademark is its composition. Respondent claims “oogle” is a variant of “ogle” which is a dictionary word. (My dictionary does not show “oogle” as a variant of “ogle”, which perhaps that explains the Panel’s “extreme suspicion” about the Respondent’s explanation.) GOOGLE is an arbitrary sign; but “oogle” is not “google”, so it could arguably be similar but not confusingly so. This was (I think) an uncertainty that Google, Inc. failed (or was unable) to straighten out.

Bi-passing the first requirement is more (perhaps, very) unusual and (in any event) more so than not assessing the second requirement. The Panel chose not to wade in on this issue; it also passed on whether Respondent had rights or legitimate interests in the disputed domain name. Instead, it focused on the bad faith and denied the complaint. The Panel noted there was precedent, but only cited cases for bi-passing the rights or legitimate interests requirement. Although not expressed, the reason for bi-passing the first requirement could be the uncertainty as to whether Respondent’s choice was typosquatting (dropping the “g”) or a legitimate “variant” spelling of “ogle.” There is no dispute that Google is a famous trademark, as we regard it today; but who knew about GOOGLE when the Respondent registered the domain name on February 7, 1999.

The issue of bad faith registration turned on the “beneficial owner” analysis. If the current Respondent was the same as the original registrant, then the registration of the domain name preceded the date GOOGLE was first used in commerce. Complainant argued that the original registrant had transferred the domain name to the current Respondent in 2004. (Respondent did not deny this, but contended that he was and had been the beneficial owner from the outset). In 2004, GOOGLE was well on its way to fame. Generally, a respondent is answerable for bad faith from the date of its own registration; it is not permitted to rely on the good faith registration of its transferor.

The USPTO database shows that Google, Inc. applied for registration of GOOGLE on September 16, 1998, five months before the Respondent registered, but (and, I double underscore this) the application to the USPTO indicated an “intent to use.” “Intent to use” suggests that applicant’s services were not at that point “in commerce.” The earliest “google” case on the UDRP docket was decided in November 2000. From that and other cases the following information can be gleaned about Google, Inc.’s trademark applications: it filed trademark registrations in Australia (March 1999) and China (September 2000). In Google Inc.’s case against Blue Arctic it offered no evidence of use in commerce before the domain name registration.

Uncertainties favor respondent. The Panel noted that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development,” but Google, Inc. has not persuasively demonstrated that Blue Arctic registered the domain name in bad faith.

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