Bizarre UDRP Decision Against Google Reminds Brand Owners of "Wild Card" Risk

Bizarre UDRP Decision Against Google Reminds Brand Owners of "Wild Card" Risk

 Bonkers. I love that word. It harkens back to an earlier era when people used more euphemisms in their speech in order to blunt the strength of their criticism. Bananas. Loopy. These are the descriptions that come to mind when I read Google Inc. v. Fundacion Private Whois / Domain Administrator, FA (Nat. Arb. Forum, May 17, 2013). Cuckoo.

The respondent in that case has been a losing respondent in 43 UDRP decisions involving some of the most well known brands in the world such as ALASKA AIRLINES, MICROSOFT, GOOGLE, CHEVRON, VICTORIA'S SECRET, VANS, and VIRGIN MOBILE, to name a few. A quick check on (one of my favorite sites) indicates that Fundacion owns 428,494 domain names. For fun, I did a quick search through the records for "apple" and found that Fundacion is the registrant of <> <> <> <> and <>, among others. I know there will be some who tell me that these folks are an innocent privacy service, but if that were so, why wouldn't they turn off the privacy service when a UDRP is filed and out their customer? No, these folks are either the squatter themselves or creating a safe haven for squatters. Either way, Fundacion appears to be a true Internet menace. With that background in mind, let's discuss what should have been a straightforward UDRP victory for Google.

Google owns the globally famous GOOGLE and GOOGLE PLAY trademarks. The GOOGLE PLAY mark is used in conjunction with online games. One of the most notorious cybersquatting houses in the world registered <>. The Respondent has associated the domain name with a website that provides online games. Tracking so far? One of the most sophisticated cybersquatters in the world sees a connection between the domain name <> and the GOOGLE PLAY mark and is so convinced of the likelihood of confusion caused that it is prepared to spend money on a domain name registration and put forward the effort and costs to associate a website with the domain name attempting to sell what Google sells. Case closed, right? Wrong.

The NAF decided that the domain name and the GOOGLE and the GOOGLE PLAY trademarks are not confusingly similar to each other. The reasoning is because there is an English word "goggles" which also exists and with the inclusion of the element play (which could only remind consumers of Google by the way) confusion is somehow abated. This leap leaves me baffled, especially in light of what the NAF had to say about bad faith, which is discussed below. Its also troubling when you look at the reality of how the GOOGLE PLAY website is accessed from a laptop: The element "play" precedes GOOGLE, making the elimination of one "o" and the addition of an "s" even more irrelevant to the typist. Not only is the domain name confusingly similar to the mark, but it was specifically fashioned to be a typo variation of the URL that Google uses to distribute goods and services under its GOOGLE PLAY mark.

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