Google won a major UDRP victory last week on 763 domains which included the “GOOGLE” mark. The 763 domains all included the mark/name GOOGLE used with other terms such as NBA team names, bank names, corporate names, political terms, movies, television, and included different TLD’s including, .net, org. .xxx and .info. The Respondent apparently registered all 763 domains in less than 2 weeks from February 29 – March 10, 2012.
The Respondent, Chris Gillespie, fought the complaint, even engaged counsel, and raised a few interesting arguments/issues including:
(i) Respondent was in the process of developing an “affinity” based social network via the 763 domains that would be used to find goods/services related to that network which would look different than the Google website;
(ii) Respondent was using the term “google” as a “generic verb” to describe the process of searching the Internet for a specific “topic, brand or person” and therefore that the proper forum for the dispute was the United States Patent and Trademark Office and the cancellation proceedings which Respondent had initiated regarding two Google trademarks; and
(iii) the only way for Respondent to monitor web traffic while developing its “network” was to put the domains in a cash parking service and therefore the panel should not conclude that there was a “bad faith” attempt to sell the domains or profit from their affiliation with the GOOGLE mark.
The three judge panel did not buy any of these arguments. First, it dismissed the idea that the GOOGLE mark was no longer a functioning trademark by explaining that any such determination was outside the authority of a UDRP panel, and that the determination of the “similarity” requirement under section 4 of the Policy concerned the disputed domain name, not the site to which the domain name resolves. It also explained that it could not just ignore the numerous domestic and international trademarks that Google held even if the Respondent was successful in its effort to cancel two of the Google marks at the USPTO.
The panel also found that putting the domains in a “cash parking service”, which apparently included a link for many of the domains which said “Interested in this domain?”, was a common lead to a sales inquiry for the domain, and therefore was evidence of the Respondent’s bad faith intent to sell the domains and profit from them, as was the fact that the Respondent registered so many domains with the GOOGLE mark in such a short period of time.
Although the substance of the panel’s decision is unremarkable, the arguments put forth by the Respondent point to the dangers of failing to monitor or protect a well known trademark from being used as a verb and thereby losing significance as a trademark (i.e., commercial source identifier). Although a UDRP proceeding is not the appropriate forum for determining the validity of a trademark, it would be within the power of a panel to look at a domain which included the term GOOGLE as a verb and decide that the Respondent did not act in bad faith because Internet users associate the mark with the act of “searching the internet”. In fact, dictionary.com provides three potential definitions for the term “Google”, the first for “Google” as a noun, and the second and third for it as a verb with and without a noun. (E.g. “to search the Internet for information about (a person, topic, etc.): We googled the new applicant to check her background.”).
Although the GOOGLE mark seems a long way off from suffering a similar fate as former trademarks like “thermos”, “aspirin”, or “escalator” which have all became common terms, there is certainly an inherent danger that it could become a victim of its own success at some point if it fails to protect the mark and stem its use as a common verb...