Google Wins Huge UDRP | DomainInvesting.com

Google Wins Huge UDRP

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This morning, The National Arbitration Forum posted a UDRP decision that was decided in favor of the complainant, Google. The UDRP covered hundreds of domain names with the Google trademark in them. Some of the domain names that were registered by the respondent include:

  • googlebarack.com
  • googlemiamiheat.com
  • googleroyalbankofscotland.com
  • googleroyalbankofscotland.com
  • googlewesternunion.com
  • googlelarealestate.com

According to Google’s response in the UDRP filing, “Respondent has recently engaged in one of the most aggressive campaigns of domain name infringement that Complainant has encountered, having registered at least 750 domain names subject to this Complaint.” It appears that the domain names contained a Google trademark and either a search term like “real estate” or another trademark like “Western Union.”

The domain owner’s response discussed Google’s trademarks: “Respondent’s petitions to cancel two of the Complainant’s US trademark registrations for the GOOGLE mark, which were filed weeks after the initiation of the instant proceedings, ‘is an inappropriate attempt to subvert the due process provisions built into the UDRP process.‘”

The domain owner contended that Google has seemingly become a generic term: “The Complainant has been aware for some time that its mark is being used generically as at transitive verb meaning “to search the Internet”. Since “google” is now considered a generic term, the proper forum to decide the issue is the Trademark Trial and Appeal Board or the courts.”

The three panelists found in favor of Google, and all of the domain names have been ordered to be transferred to Google.

One interesting facet in this is that Google will own hundreds of domain names it arguably didn’t want to own but didn’t want someone else to own either. It will be interesting to see if they let these names drop or choose to renew them for thousands of dollars a year.


About The Author: Elliot Silver is an Internet entrepreneur and his company earns revenue from domain names. Elliot is President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Elliot is the publisher of DomainInvesting.com. Read this blog's disclaimer for information about the publisher, comment policy, disclosures, and conflicts.

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Comments (5)

    Jeff

    So can Royal Bank of Scotland now launch a UDRP against Google for owning googleroyalbankofscotland.com?

    May 11th, 2012 at 9:22 am

    Acro

    The respondent actually filed a motion to cancel the tm’s of Google. Such lunacy, never seen before.

    May 11th, 2012 at 12:38 pm

    JamesD

    Acro – lunacy only equalled by registering such crap names in the first place!

    May 11th, 2012 at 2:07 pm

    B

    I’m fairly certain they wouldn’t mind having the actual RBS ask them for it politely—they might even not need one of those overweight legal document big companies enjoy so much: I mean, RBS isn’t going to lie about a partnership with the Big G, or mess with that brand. They probably wouldn’t even mess with the re-addressing protocol. Neither would the White House, Western Union or the Heat.

    I’m almost certain those institution actually were approached by the squatters (who would never step into the Google’s lair) didn’t have a taskforce to deal with that, and a Googler told them they do that for breakfast, and were happy to provide a precedent for all the rest.

    May 11th, 2012 at 9:46 pm

    Dave Zan

    So can Royal Bank of Scotland now launch a UDRP against Google for owning googleroyalbankofscotland.com?

    Sure, but they have to prove their claims. Then again, they might decide it’s not worthwhile, especially if people aren’t likely to visit that domain to find them online.

    May 11th, 2012 at 11:10 pm

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