In a case that is sure to drive the trademark holders crazy, Google Inc. just lost a UDRP on the domain name play-gogles.com which was registered in February 2013.
Google claimed it had rights to the domain name play-gogles.com based off its trademarks for Google and Google Play.
However the one member panel denied Google’s claim even though the domain holder didn’t even bother responding the the UDRP, finding
“Panel is not persuaded by Complainant’s submissions that the terms are confusingly similar.”
However the panel also found “given the February 2013 registration date of the domain name and the content of the resolving website, more than suggest that Respondent targeted Complainant’s trademark”
“Complainant argues, in short, (i) that the word “play” is descriptive in the context of the goods; (ii) that GOGLE is an obvious misspelling of GOOGLE, and (iii) that merely inverting the terms of a trademark is insufficient to avoid confusing similarity.”
“What that submission awkwardly sidesteps is the fact that, in English, the word “goggles” (always used in the plural) is a well understood common noun and that GOGLES is (1) a degree of misspelling closer to “goggles” than it is to GOOGLE; (2) is phonetically identical to “goggles”, and (3) when prefaced by the word “play” is given semantic sense and meaning which is altogether absent if GOGLES is interpreted as GOOGLE. “
“For the sake of completeness Panel notes here the evidence relative to the other elements of the Policy (legitimate interests and bad faith) which, given the February 2013 registration date of the domain name and the content of the resolving website, more than suggest that Respondent targeted Complainant’s trademark. Nevertheless, it has been remarked more than once in former UDRP decisions that a complainant bears an essential obligation to prove confusing similarity under paragraph 4(a)(i) of the Policy independently of other factors.”
“Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.”