Google Inc. submitted a UDRP complaint at the National Arbitration Forum for the domain name oogle.com. Respondent was Blue Arctic LLC from Florida.
The 3-member Panel wrote that the Complainant failed to prove the third element of the Policy (Registration and Use in Bad Faith) with respect to the Disputed Domain Name. So the Panel made no findings with respect to the first or second elements of the Policy.
The Domain was registered on February 7, 1999 by Christopher Neuman (that carried on business under a fictional unregistered business name, namely Fusion3k Designs) and was later transferred to Blue Arctic LLC in late 2004. Christopher Neuman is sole member and manager of Blue Arctic LLC.
The main issue discussed by the Panel was whether Respondent was the “beneficial owner” of the Disputed Domain Name since it was created on February 7, 1999, even though the current registrant is identified as Blue Arctic LLC and the original registrant appeared to have been Fusion3k Designs.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 3.7, states:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
The Panel concluded that with adequate explanation and in the absence of efforts to conceal a domain name registrant’s identity, the current registrant of a domain name may be considered to have been the beneficial owner of the domain name since its creation date, despite changes in the WHOIS record. This Panel adopts this view, although it cautions that the rule should be applied only in narrow circumstances where the explanation is not unbelievable and is supported by appropriate evidence.
In light of the above, the Panel found that the Respondent in this proceeding, Blue Arctic LLC, was the beneficial owner of the Disputed Domain Name since it was created on February 7, 1999.
Accordingly, the Panel had to determine whether the Disputed Domain Name “had been registered” in bad faith when registration occurred on February 7, 1999, despite the Respondent’s subsequent activities. It was unclear to the Panel whether, on February 7, 1999, Complainant had rights in the GOOGLE trademark. Google apparently did not own any trademark registrations for the mark on February 7, 1999.
Respondent provided a declaration clearly stating that it registered the Disputed Domain Name not “due to the existence of Google.com or the Complainant’s trademarks” but instead due to his relationship with a “young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
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. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.
Panel found that Complainant did not prevail in showing that the Disputed Domain Name “had been registered” in bad faith so the transfer of the domain name oogle.com was DENIED.