1. The Hearing Officer seems to put unusual weight on the existence of a ‘family’ of GOOGLE marks in assessing whether a prospective purchaser may still be ‘caused to wonder’ whether the marks, though different, are the property of the same entity. The ‘family’ point should have been put no higher than noting it as a relevant factor in the totality of assessing whether there was a likelihood of deception or confusion. The point is not normally raised under section 44 as the Hearing Officer has done but, rather, is typically used in the context of a section 60 ‘reputation’ point.

2. The Hearing Officer also made reference to the Macquarie Dictionary definition of the word GOOGLE and noted that there is no definition in The Macquarie Dictionary Online (2008) for the word ‘EBAY’. The decision also highlights why every Australian trade mark practitioner needs a copy of the accepted dictionary of ‘Australian English’, the Macquarie Dictionary and access to previous editions - a point made last year by Mark Davison on the Australian Trade Marks Law Blog HERE.

Domain name complaint

In Google Inc. v. Dmitri Rytsk (Case No. DAU2007-0004)  a decision of the WIPO Arbitration and Mediation Center handed down on 8 August 2007, sole panelist The Honourable Neil Brown QC (who also writes for the Australian Trade Marks Law Blog), found for the Complainant on the basis that the three elements enumerated in paragraph 4(a) of Schedule A of the .au Dispute Resolution Policy (auDRP), were satisfied, namely:

• the domain name registered by the Respondent was identical or confusingly similar to a name, trade mark or service mark in which the Complainant had rights; and
• the Respondent had no rights or legitimate interests in respect to the domain name (that is, it failed the tests set out at paragraph 4(c) of Schedule A of the auDRP); and 
• the Respondent had used the disputed domain name <googlebay.com.au> in bad faith.

Confusing similarity

On ‘confusing similarity’ the panelist stated: “the real issue. . . is how the objective bystander would view the collocation of the two words “google” and “bay” that have been joined to create the word “googlebay”.” A comparison was made of the GOOGLE trade mark and the <googlebay.com.au> domain name to determine the likelihood of confusion, ignoring the content of the Googlebay website “because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content.” The panelist also noted that it has been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the 2LD “.com.au”.

Legitimate interests

Neil Brown found that the respondent had no rights or legitimate interests in the domain name and had not rebutted Google, Inc’s prima facie case that there was no evidence that the respondent was known as “google ” or “googlebay”, that it had been using the domain name for a bona fide offering of goods or services or that it had been making a legitimate fair use of the domain name.

The panelist made reference to the Internet Archive (also known as the Wayback Machine) and noted:

“the Wayback Machine shows that as late as August 30, 2006 the site was used for purely commercial purposes, it was laid out and coloured in such a way that some users may well have thought that it was an official Google site, it had no disclaimer and it carried links to all of the usual blandishments offered on such commercial sites from used cars to credit cards. The layout and colouring of the site was also not dissimilar to the layout of pages of the “www.ebay.com.au” website.”

The decision also highlights why every Australian domain name practitioner needs to keep the Wayback Machine linked as a favourite.

Bad faith

The panellist found both bad faith registration and bad faith use (only one is required to succeed on this issue), permitting the complainant to rely on a general notion of bad faith rather than the criteria for bad faith found in paragraph 4(b) of the Policy.

In determining whether Mr Rytsk was seeking to “trade off’ Google Inc’s rights in its trade mark, the panellist noted the fact that the domain name was registered several years after the trade marks is itself evidence of bad faith, citing The University of Windsor v. Modern Empire Internet Limited, (WIPO Case No. D2006-1238).

Having made out the third of the three elements that it must establish, Google Inc was successful in obtaining a mandatory transfer of the domain name.

A search of the Register of Trade Marks in Australia reveals that the mark was accepted by the Trade Marks Office then opposed by both Google Inc and Ebay Inc. The Ebay opposition was waiting in the wings, pending the outcome of the Google opposition proceeding.

So what?

There is nothing wrong with collocation per se (eg MicroSoft, WordPerfect) but indifference to the commercial lexicology of the words involved can be risky and expensive. Anyhoo, I see that MYMICROSPACEFACEBOOK is available . . .

Nick Weston