Google Inc -v- LWD Internet [2004] DRS 1443 (5 March 2004)

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The complaint was received by Nominet in full with hardcopies on 3 December, 2003. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 8 December, 2003, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 2 January, 2004) to submit a Response. A Response was duly received on 2 January, 2004 and Nominet forwarded this to the Complainant accordingly on 5 January, 2004, giving the Complainant until 14 January, 2004 to file a Reply. A Reply was submitted on 14 January, 2004 and subsequently copied to the Respondent on 19 January, 2004. The parties were invited to participate in Informal Mediation in the period 20 January-3 February, 2004. The Complaint was not resolved by Informal Mediation, and on 12 February, 2004 Nominet invited the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid and was received by Nominet on 13 February, 2004.

On 17 February, 2004, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on the 20 February, 2004.

The Complainant, Google Inc., is the operator of the familiar international online search service, Google, provided from www.google.com and elsewhere.

Google also now operates a service for finding information on products for sale online (presently limited to the US) which is accessible via www.froogle.com.

The domain name froogle.com was first registered to Google Inc., on 11 September, 2001 according to the WHOIS record. Google also registered froogle.org on 5 June, 2002. A number of other froogle domains have also been registered by Google in other TLDs , but these do not clearly predate the registration of the Domain Name at issue in these proceedings.

Google also has a pending US Trademark application 78/187,946 for FROOGLE for services in Class 42 dating from 11 November, 2002. However, in this case, the application is formally in the name of Google Technology Inc. rather than Google Inc. itself.

The Respondent, LWD Internet, offers domain name registration, web hosting and e-commerce services from www.lwdinternet.com and www.lwdinternet.co.uk. It is also a Nominet UK Tagholder [LWDINTERNET], able to register domains directly itself with Nominet.

From the WHOIS records, the Domain Name froogle.co.uk was registered directly by and for LWD Internet on 12 December, 2002. LWD Internet was identified as Registrant, Admin, Billing and Technical contact and the specified DNS Nameservers were LWD Internet’s own.

The Complainant has asserted that,
1. On the balance of probabilities:
(i) the Complainant has unregistered trade mark rights in the mark FROOGLE, which is identical to the disputed Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Complainant is Google Inc. The Complainant is the proprietor of the www.google.com website, the world famous Internet search engine, founded in 1997 and which now has more than 200 million separate search queries a day. The panellist [i.e. - Expert] is invited to visit the “about” page on the Complainant’s website at http://www.google.com/about.html.

The Complainant is the owner of google.co.uk which it links to its main Internet search engine site. A copy of the whois for google.co.uk was provided as Annex 2 to the Complaint.

On 11 December, 2003, the Complainant launched a new Internet search engine called FROOGLE.COM, designed to be used by Internet users searching for products to buy. FROOGLE was a play on “Google” and “frugal”. Copies of pages from the Complainant’s website www.froogle.com were attached at Annex 3 to the Complaint.

The Complainant owns numerous domain names comprising the word FROOGLE. A list was attached at Annex 4 to the Complaint, along with relevant whois searches. The majority of these domain names link to the Complainant’s FROOGLE search engine.

The Complainant has applied for the registration of the FROOGLE word in the US and Canada as well as making an application for a Community Trade Mark. A table of such applications along with trade mark search results was attached as Annex 5 to the Complaint. The Complainant has also applied for FROOGLE in Argentina and Japan.

FROOGLE.COM was launched on 11 December, 2002. The panellist [i.e. Expert] is invited to note that although FROOGLE.COM was initially only launched in the United States, there was press coverage of its launch appearing in the United Kingdom from 12 December, 2002. Copies of press articles reporting on the launch on 12 December, 2002 were attached at Annex 6 to the Complaint.

The Complainant’s FROOGLE.COM service is currently available in North America although the Complainant may expand the service to other territories in the future, as evidenced by its registration of the numerous country level domain names listed at Annex 4 to the Complaint.

The Respondent is a UK company engaged in the business of domain name registration, web hosting and e-commerce as described on its website at www.lwdinternet.co.uk.

The Respondent has an associated business called Surrey Web Design. It has a web site at www.surreywebdesign.co.uk. An extract from their website was attached at Annex 7 to the Complaint.

Both the Respondent and Surrey Web Design are owned and run by an individual, Trevor Noad.

The Respondent, unknown to the Complainant, registered the Domain Name on 12 December, 2002, the day after the Complainant launched FROOGLE.COM.

On 13 December, 2002 the Complainant first became aware that the Respondent had registered the Domain Name when it attempted to register the Domain Name and found that it had been registered the previous day. At this stage the Respondent was not using the Domain Name.

The Complainant sent an email and letter to the Respondent on 13 December, 2002. A chaser email and letter was sent on 31 December, 2002. No response was received. A copy of these letters and emails and all other inter partes correspondence was provided at Annex 8 to the Complaint.

The Complainant received an email from a Stephen Scarr on 31 December, 2002. The email drew the Complainant’s attention to the Respondent’s registration of the disputed Domain Name and stated that the Respondent “believed Google would pay a large sum of money for it [the disputed Domain Name] but said he was prepared to sell it to me [Mr Scarr] for £10,000”. The Complainant did not respond substantively to Mr Scarr. A copy of Mr Scarr’s email was attached to as Annex 9 to the Complaint

At some stage the Respondent began using the Domain Name as a web address for a one page website. A copy of the home page was attached as Annex 10 to the Complaint. The Complainant believes this was the only version of the site. It is no longer active.

As the Respondent failed to agree to transfer the Domain Name to the Complainant, the Complainant instructed Willoughby & Partners to send a letter before action. This was sent on 31 March, 2003. Mr Noad of the Respondent company called Matthew Jacob of Willoughby & Partners on the same day and alleged that the Respondent had registered the domain name genuinely.

There then followed some inter solicitor correspondence between Wilson Gunn Gee for the Respondent and Willoughby & Partners for the Complainant. The Complainant’s [sic] attention is particularly drawn to Wilson Gunn Gee’s letter of 6 May, 2003 in which they made a without prejudice offer to transfer the domain name for £2,000 which they said constituted the Respondent’s costs incurred in the matter and the cost of selecting and registering a new name.

Eventually without prejudice negotiations between the parties resulted in broad terms of settlement being agreed which comprised the Complainant paying the Respondent £500 plus a £1,000 credit towards one of its Adwords accounts. Unfortunately negotiations stalled at this stage. Wilson Gunn Gee agreed that Willoughby & Partners should contact the Respondent directly as they were unable to obtain instructions. Willoughby & Partners sent a letter dated 19 September, 2003 to the Respondent and followed up with a phone call on 29 October, 2003 in which the Respondent confirmed that he was no longer willing to agree to the terms of settlement and stated that if the Complainant wanted the Domain Name they would have to make an increased offer.

The Complainant asserts that the Domain Name is an Abusive Registration in accordance with its definition under the Nominet DRS Policy.

This is on the basis that in accordance with paragraph 3(i)A of the Nominet DRS policy the Respondent registered the domain name primarily for the purposes of selling the Domain Name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.

The Complainant relies on the email of Mr Scarr at Annex 9 in which he indicates that the Respondent was prepared to sell the Domain Name for £10,000.

The Complainant relies on the fact that the Respondent offered to sell the domain name to the Complainant for £2,000 (see Wilson Gun Gee’s 6 May 2003 letter at Annex 8).

The Complainant also relies on the Respondent’s negotiation to sell for £500 plus £1000 Adword account credit and its final assertion in the telephone conversation of 29 October, 2003 in which Mr Noad stated that if the Complainant wanted the Domain Name they would have to make an increased offer.

The fact that the Respondent was so quick to make an offer following Willoughby & Partners’ initial letter before action indicates that their alleged good faith intention to use the Domain Name in connection with a site for people on low budgets was not genuine.

The Complainant relies on the fact that the Respondent must have known of the Complainant’s trade marks and business at the time of registration of the Domain Name given the publicity surrounding the launch of FROOGLE.COM (see Annex 6). The Respondent’s business area is so closely associated with FROOGLE.COM that it is inconceivable that the Respondent would have been unaware of the launch of FROOGLE.COM prior to registration of the Domain Name. The Complainant notes that Surrey Web Designs say on their web site that they “can register your site with all the major search engines and directories and over 350,000 smaller search engines and directories” (see the heading “Promotion” at Annex 7). For a professional web design and e-commerce consultancy not to have known about the FROOGLE.COM search engine prior to its launch is inconceivable.

The fact that the Domain Name was registered less than 24 hours after the launch of FROOGLE.COM is extremely convincing evidence that it was registered with the Complainant’s FROOGLE mark in mind. Given that the Respondent knew of FROOGLE.COM upon its launch, the Respondent’s intentions must have been to block the Complainant’s registration of the Domain Name. The Respondent was effective in doing so, as the Complainant found out the next day when it was unable to register the Domain Name with Nominet.

Accordingly, the Complainant asserts that the Respondent’s registration of the Domain Name was a blocking registration against the Complainant’s FROOGLE mark under paragraph 3(i)B of the DRS policy.

Although the Respondent alleges that the Domain Name was registered for a legitimate purpose, it is common for registrants seeking to hide bad faith registrations of domain names to establish “front” websites to create a fake mask of credibility. The Claimant asserts that the Respondent’s website was such a front; no evidence of the development of the site and the low budget advice service apart from the one page website at Annex 10 has ever been produced; the website only came into existence after the Complainant’s initial approach of 13 December, 2002; the services alleged to be offered on the site are very far removed from the Respondent’s core business; the Respondent has not developed its website beyond the home page at Annex 10 – in fact the site has been off line for at least 3 months. For these reasons the Complainant asserts that the website was a veil to hide the real principal intention of the Respondent to sell the name as set out above.

The Complainant also asserts that there are circumstances indicating that the Respondent has been using the Domain Name in a way which is likely to confuse people or businesses into believing that the Domain Name is registered to, operated by, or otherwise connected to the Complainant.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or to apply for or use any domain name incorporating any of its marks.

The Respondent does not own a UK trade mark, or any other registered mark in respect of the Complainant’s mark and is not commonly known by the name FROOGLE.

The Respondent is not making non commercial or fair use of the Domain Name. FROOGLE is an invented spelling and is not descriptive or generic so there can be no legitimate excuse for its selection.

The Complainant submits that the circumstances in which the Respondent is using the Complainant’s mark renders the Domain Name in the hands of the Respondent an Abusive Registration.

The Respondent filed a Response, provided by Mr. Noad, in which he made the following submissions:

Introduction
I [i.e. Mr. Noad] am a partner in both LWD Internet and Surrey Web Design, neither of which is my principal business (I have other business interests). I am not involved with the normal day-to-day running of LWD Internet, although I do some work as required. I do some development work as Surrey Web Design as and when time permits. My other business interests are generally unrelated. Word count restrictions prevent further information. I am hereby representing LWD Internet and Surrey Web Design.

Background
We registered froogle.co.uk on 12th December 2002 and set it up with a temporary home page. The Complainant launched its froogle.com service at about the same time. The timing of our domain registration and the launch of froogle.com was entirely coincidental. We received a letter from Stephen Scarr (Annex 2 to the Response) around 31st December, 2002 offering to purchase the domain name. This alerted us to the potential dispute. We decided not to post any further content to the website pending legal advice. Initial legal advice in January 2003 was that the Complainant had no trademarks on FROOGLE in the UK and had no reputation in FROOGLE in the UK and that we could continue using the domain, but that the Complainant would probably seek trademark registration in the near future and dispute was possible. Formal notification of the dispute was by letter from Willoughby’s of 31st March, 2003. The Complainant alleges sending emails and letters on 13th and 31st December 2002. These were not received. Negotiations via solicitors followed, resulting in broad terms of agreement for settlement of the dispute in return for the Complainant covering our costs. Broad terms included mutual confidentiality and the Complainant ceasing all allegations. There was never any intention to profit from the transfer. We ceased negotiations because the Complainant no longer agreed with the broad terms and wanted a one-sided agreement in their favour: they wanted to continue making allegations and an exemption from mutual confidentiality. Cessation of negotiations had nothing to do with money, only terms.

Abuse of Process
The Complaint is an abuse of process (reverse domain name hijacking) following the breakdown of negotiations via solicitors. We consider that the Complainant made a big mistake in launching a service without having secured domain names and trademarks and is attempting to cover this up. The Complainant has provided no evidence of abusive domain name registration as defined in Nominet DRS policy. The Complainant has provided no evidence of any Rights or reputation in the word FROOGLE in the UK at the time of registration (of froogle.co.uk), nor any evidence of Passing Off or confusion. Much of the “evidence” submitted by the Complainant is at best, spurious. The Complainant is relying on its reputation in the name Google rather than any reputation or Rights it may have in the word FROOGLE.

Complainant’s Rights
Abusive Registration is defined as “means a domain name which either:
i – was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainants Rights, OR
ii – has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants Rights”
At the time of registration (of froogle.co.uk), the Complainant had no “Rights” in the word FROOGLE in the UK Any Rights the Complainant may now have in the word FROOGLE in the UK have been acquired AFTER the time of registration (of froogle.co.uk). It is important to note the timing of registration (of froogle.co.uk). We registered the domain name froogle.co.uk on 12th December 2002 at approximately 10.10 AM GMT. Nominet confirmed this registration at 10.10.35 AM GMT (Annex 3 to the Response). This is prior to publication of many of the news items about froogle.com. The article from theregister.co.uk is timed at 21.35 PM GMT, some 11 hours, 25 minutes after our registration of froogle.co.uk. The ZDNET article is timed at 11.45 AM PT, which is approximately 18.45 PM GMT or 19.45 PM GMT, again, several hours after our registration of froogle.co.uk.

FROOGLE.COM Service/Reputation - US vs UK
The Complainant’s website at froogle.com was, and still is, targeted at US citizens and US businesses. All products listed are in US$ and “product feeds” are accepted only from US based retailers (Annex 4 to the Response). The website serves no purpose for UK citizens and UK businesses. Therefore, at the time of registration (of froogle.co.uk), the Complainant had not established any reputation in the word FROOGLE in the UK. The Complainant’s website at froogle.com was launched for direct access through http://www.froogle.com. No information or links were displayed on the Complainants main website at www.google.com. The general public will not have known about the Complainants website at froogle.com – only a small number of “industry insiders”, i.e. people who regularly read the IT news websites, will have known about froogle.com. On or around 9th December 2003, the Complainant began displaying links to froogle.com from its main website at www.google.com. We consider that this “public launch” and the initiation of Nominet DRS action have been timed to coincide with each other to give the impression that a reputation in FROOGLE in the UK has existed since before the time of registration (of froogle.co.uk). The Complainant gives no other explanation for the fact that they waited several months to initiate Nominet DRS proceedings.

Trademark Applications/Other Domains
The Complainant applied to trademark the word FROOGLE with the USPTO in the USA on 27th November 2002. It takes several months for a US trademark application to be published for opposition purposes and granted. At the time of registration (of froogle.co.uk), this trademark application would not have been published (for opposition purposes) and cannot have been granted. Therefore we cannot possibly have known that a US trademark application was pending.. The Complainant applied to trademark the word FROOGLE in the UK / EU on 22nd April 2003, several months after the time of registration (of froogle.co.uk). This application still appears to be pending. The Complainant’s applications to trademark the word FROOGLE in other countries have also been made after the time of registration (of froogle.co.uk). Many of the other worldwide domain names registered by the Complainant were registered after the time of registration (of froogle.co.uk).

Purpose Of Domain Registration
We registered the domain name froogle.co.uk for our own use, not for the purpose of selling, renting or otherwise transferring the domain name to any other person or company. At no point have we advertised the domain name as being for sale or rent. Our domain name registrations are strictly for our own use or “as ordered” by customers / clients. The issue of froogle.com and the potential dispute was brought to our attention by a letter from Stephen Scarr (Info.com) asking to purchase the domain name froogle.co.uk (Annex 2 to the Response). Mr Scarr offered to purchase froogle.co.uk from us for £3000. We stated that we had registered the domain name for our own use, not for sale, and declined his offer. Various other offers to purchase froogle.co.uk were received, all of which were declined or ignored. Among these was an email dated 7th February 2003 from matt@sedo.co.uk (a domain name agent) offering to assist with the sale of froogle.co.uk to the Complainant (Annex 5 to the Response). The offer was declined. The offer (via solicitors) to cease using the domain name and transfer the domain name to the Complainant was in response to action initiated by the Complainant and was made in accordance with legal advice. There was never any intention to profit from the transfer, only for the Complainant to cover our costs. If the primary purpose of registration was to sell the domain, we could have done so to Mr Scarr or to others. In any event, DRS Policy 1(i) defines abusive registration as “was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainants Rights”. At the time of registration (of froogle.co.uk), the Complainant did not have any such Rights in the word FROOGLE in the UK.

Blocking Registration
We had no intention of blocking the Complainant from registering a .uk domain name for their froogle.com service. The Complainant claims it attempted registration of froogle.co.uk “the next day” (presumed to mean 13th December 2002). The Complainant could have registered the domain names froogle.org.uk or froogle.me.uk, both of which may have been available at the time – they were registered on 18th December 2002 by another company and both now point to a search engine (Annex 8 to the Response). If our intention was to block the Complainant from registering a UK domain name for froogle.com, then we could easily have registered froogle.org.uk and froogle.me.uk as well. The domain names froogle.ltd.uk and froogle.plc.uk are both still unregistered (Annex 8 to the Response). There is nothing to prevent the Complainant setting up a limited company (LTD or PLC) in the UK and registering one of these domain names. In any event, the Complainant did not have Rights in the word FROOGLE in the UK at the time of registration (of froogle.co.uk)

Confusion / Passing Off
The Complainant claims there are circumstances of confusion (passing off), yet fails to present any evidence.

Invention Of FROOGLE
We registered the domain name froogle.co.uk with the intention of using it to demonstrate database technologies to potential web development clients. The site was to be a publicly available website with the theme of “saving money”, targeted (primarily) at people on low incomes. The domain name frugal.co.uk was at the time unavailable for registration. The word FROOGLE is phonetically similar to frugal, meaning thrifty, which is relevant to the intended use. The Complainant claims that FROOGLE is an invented spelling and implies that only they are capable of inventing words. They are not the first inventors of the word FROOGLE (Annex 6 to the Response). Our invention of the word FROOGLE is entirely legitimate.

Use Of FROOGLE.CO.UK
After registering froogle.co.uk on 12th December 2002, we set up the domain name on web servers and uploaded the temporary home page. It takes 24-48 hours for DNS to resolve and for the domain name / website to be visible worldwide. This may be why the Complainant did not see the website when they allegedly checked on 13th December 2002. The Complainant cites limited website development, non-use and “not making non-commercial or fair use” as evidence of abusive registration. Initial development of our website was of databases and “back end code”. These are used to store and prepare information for display on the website as HTML pages – they are not part of the publicly visible website. We began developing and using froogle.co.uk on 12th December 2002. The Complainant allegedly notified us of the dispute on 13th December 2002. We decided on 31st December 2002 (following the letter from Mr Scarr) not to post any more publicly accessible pages and information pending legal advice. It is unreasonable to expect anything more than limited development in such a short space of time. The website for froogle.co.uk was deleted some months ago following agreement of broad terms for transfer and as a gesture of goodwill to the Complainant. Full agreement and transfer was expected to follow. It is unreasonable to cite non-use considering the reasons for non-use. In any event, non-use is not in itself evidence of abusive registration. Our limited use of froogle.co.uk was fair use. Our intended website would also have been fair use.

Old Information
The Complainant refers to information posted on the Surrey Web Design website. This is old information on an old website that was acquired by me in late 2001 and has not yet been updated. Much of the textual content remains unchanged from when originally developed by the previous users. Archive.org shows the particular page referred to as being online in August 2001 (Annex 7 to the Response). Redevelopment is not a priority: other business interests are more important. The Complainant’s reliance on old, acquired information should be disregarded.

Taking the headings in the Response as a guide the Complainant made the following supplementary submissions in reply to the Response:

Background
The Respondent says it launched its site at “about the same time” as the launch of the Complainant’s froogle.com. Crucially it was launched shortly after the Complainant’s froogle.com service as demonstrated in the Complaint as filed (also see further comments under the heading Complainant’s Rights below).

The Respondent alleges that it was first alerted to the potential dispute by Stephen Scarr around 31 December, 2002 and that it did not receive the Complainant's letters/emails of 13 December and 31 December, 2002. This is disputed. Attached at Annex 1 to the Reply were fax confirmations confirming the said letters were received by the Respondent’s fax machine number 07092 225 281, the fax number shown on the Respondent’s website at www.lwdinternet.co.uk. In the telephone call between Willoughby’s Matthew Jacob and Trevor Noad of the Respondent of 31 March, 2003, Mr Noad confirmed that he received the Complainant’s email of 13 December. As evidence of this, a contemporaneous attendance note was attached at Annex 2 to the Reply.

The Respondent alleges it ceased negotiations because “the Complainant refused to be bound by the broad terms”. In fact, in the Respondent’s attorney’s 15 July letter executed agreements in accordance with the negotiated settlement were returned to Willoughbys with two significant amendments made by the Respondent which had not previously been agreed. This made the Complainant suspicious that the Respondent had registered other famous marks owned by the Complainant as domain names (see Willoughby’s letter of 25 July at Annex 9 of the Complaint). When the Complainant refused to accept these changes the Respondent added a further proviso that they no longer had any use for an Adword and would only transfer the disputed domain name for £2,000 instead of the previously agreed £500 and £1000 worth of Adwords. Mr Noad reiterated that he wanted more for the name in a telephone call with Willoughby’s on 29 October 2003. As evidence of this claim, a contemporaneous attendance note was provided at Annex 3 to the Reply.

Abuse Of Process
The Complainant denies that the Complaint constitutes reverse domain name hijacking as the Complaint is filed reasonably and in the firmly held belief that the registration is abusive as demonstrated in the Complaint.

Complainant’s Rights
The Complainant denies it did not have rights in the word FROOGLE in the UK at the time of registration and asserts that the worldwide publicity on 12 December prior to registration gave the Complainant unregistered trade mark rights in FROOGLE in the US and the UK as well as further afield. Modern media and worldwide internet accessibility ensures that reputations can literally be made overnight. In any event, the definition of “rights” in the Policy includes, but is not limited to, rights enforceable in English law. Accordingly unregistered rights enforceable in the US are relevant.

The Respondent asserts that the disputed domain name was registered at 10.10am and that “many” of the articles at Annex 7 of the Complaint are timed after 10.10am. In fact only two of the six articles are timed after 10.10am and these are the two identified in the Response.

Additionally, abusive use of domain names since registration is sufficient to demonstrate bad faith under the Policy. By the time of the Respondent’s offer to transfer the domain name to the Complainant for £2,000 (see Wilson Gun Gee 6 May 2003 letter at Annex 9 of the Complaint) the Complainant had had 6 months of continued and extensive use of the FROOGLE mark on the internationally accessible www.froogle.com website. Consequently, while the Complainant had rights in FROOGLE at the time of the bad faith registration anyway, such rights were more extensive by the time of the Respondent’s abusive conduct demonstrated by its offer to sell the domain name on 6 May 2003.

FROOGLE.COM Service/Reputation
The Respondent says only a “small number of ‘industry insiders’ i.e. people who regularly read the IT news websites will have known about froogle.com”. The Complainant maintains that, given the Respondent’s area of business, including the purchasing of domain names, web site hosting and search engines, the launch of froogle.com is precisely the sort of news the Respondent would have known about. The Complainant asserts that it is very likely that the Respondent was, prior to registration of the domain name, signed up to IT news emailing lists which would have alerted them to the launch of Froogle.com.

The Complainant denies that the links to Froogle.com on www.google.com indicate the time of the launch of Froogle.com. Froogle.com was publicly launched on 12 December 2002 when the Froogle.com site was launched.

Trade Mark Applications
It is denied that the Respondent cannot have known the Complainant’s US trade mark application was pending as applications to the USPTO are a matter of public record and can be accessed via www.uspto.gov. The US application for FROOGLE 78187946 was filed on 22 November 2002 and the details of the application will have been available on www.uspto.gov from that date. However, since the Complainant’s rights are based on a reputation and unregistered trade mark rights created by a worldwide publicity launch of an internationally accessible website this is irrelevant even if the Respondent was not aware of the Complainant’s trade mark applications and domain name registrations.

Purpose Of Domain Name Registration
The Respondent reiterates that the potential dispute was brought to their attention by a letter from Mr Scarr (which is denied by the Complainant). The Respondent alleges that they declined Mr Scarr's offer to purchase the domain name. The Respondent says that they rejected the offer as the domain name was not for sale. This is not corroborated by Mr Scarr. In his email of 31 December 2002, (Annex 10 of the Complaint), Mr Scarr says he received a telephone call from a representative of the Respondent called Trevor, presumably Trevor Noad. In the conversation, Mr Scarr says Trevor stated that “he believed Google would pay a large sum of money for it [the dispute domain name] but said that he was prepared to sell the name to [Mr Scarr] for £10,000”.

The Respondent says that various other offers to purchase the domain name were received but all were declined. Only evidence of one of these offers in the form of the correspondence with sedo.co.uk has been submitted. Incidentally this correspondence shows just how sophisticated domain name pirates have become. It is also interesting that Sedo expresses how incredible the Respondent’s story is that the registration of the froogle.co.uk domain name was coincidental. The Complainant asserts that the rejection by the Respondent of the offer is not surprising. The Respondent by this stage was aware of the potential dispute with the Complainant and thought it had a bigger fish on the hook. In any event they did make a subsequent offer to sell the domain name for £2,000 as can been seen from the subsequent correspondence between the parties.

Blocking Registration
The Respondent asserts that if their intention was to block the Complainant’s registration they could have registered froogle.org.uk or froogle.me.uk. This is irrelevant. Given their area of expertise the Respondent would have been aware that froogle.co.uk was the most valuable to the Complainant. .co.uk domains are the most commonly used commercial domains for the UK - .org.uk, .me.uk and .ltd.uk domain names are hardly ever used by commercial companies. Being in the domain name business the Respondent knows this perfectly well.

Confusion/Passing Off
For enforcement of unregistered rights it is not necessary to show actual confusion, only the likelihood of confusion. In this case the Respondent’s site consisted of a one page website for information only which was not interactive and which has been inactive for approximately the last ten months. In such circumstances actual confusion is unlikely to come to the attention of the Complainant.

Invention Of FROOGLE
The Respondent alleges that they registered froogle.co.uk “with the intention of using it to demonstrate database technologies to potential web development clients. The site was to be a publicly available site with the theme of “saving money”...”. This is the first time that the Respondent has alleged that it registered froogle.co.uk for this purpose. On all previous occasions it alleged that froogle.co.uk was registered purely in order for use in connection with a site for those on low incomes. The panellist is referred to Wilson Gunn Gee's letter of 10 April 2003 at Annex 9 of the Complaint. The Complainant believes that the new alleged purpose behind the site is an attempt by the Respondent in the light of the allegations in the Complaint to give a more credible reason for having registered froogle.co.uk given their entirely different business area. The Respondent alleges that it created databases and “back end code” for use in connection with www.froogle.co.uk. No evidence of the creation of such databases or back end code has been submitted. The Response also does not explain why the fanciful spelling of “frugal”, FROOGLE, was chosen and launched the day after the Complainant’s website of the same name.

Even if the panellist [i.e. Expert] believes the Respondent’s new story, the Respondent’s activities still constitute bad faith as they must have known about Froogle.com and the registration and use must have been an attempt to cause confusion on the Internet and thereby divert business for commercial gain (3(ii) of the DRS).

The Complainant notes the third party uses of the word FROOGLE. None of the third parties have tried to target the Complainant in the same manner as the Respondent. It is the targeting of the Complainant that makes the registration abusive.

Old Information
The Respondent says the web site pages at Annex 8 of the Complaint should be disregarded as old information. The fact that the address given on the Surrey Web Design site is identical to that of the Respondent indicates that it has in fact been updated since the Respondent’s alleged acquisition of the site in 2001, as is the fact that the copyright notice on the relevant page is 1999-2003. The Complaint refers to the website pages which were reproduced at Annex 4 to the Reply. The Complainant asserts that the Respondent has failed in its attempt to distance itself from the assertion on the Surrey Web Design site that it has expertise on Internet search engines. In any event the Respondent is clearly involved in domain name hosting and web hosting services as can be seen from the pages from its site at Annex 5 to the Reply.

Summary
The Complainant asserts that the Response further demonstrates the Respondent’s bad faith intentions in registering and using the disputed domain name. The following simply illustrate further their bad faith:
1. They have recently invented a new story to attempt to explain the registration and use of the domain name which is inconsistent with their previous stated reason for registration.
2. They allege they never received the Complainant’s correspondence of 13 December 2002 despite previously admitting they had received that correspondence. The evidence of the fax transmittal sheets at Annex 1 to the Reply also indicates they did receive the correspondence.
3. They allege they rejected Mr Scarr’s offer to buy the domain name despite evidence from Mr Scarr to the contrary.
4. They allege they have not updated the Surrey Web Design website since they purchased it in 2001. This is clearly not the case.
5. They allege the domain name was registered and used to demonstrate database technologies to potential web development clients. Even if this newly invented purpose is to be believed it still constitutes bad faith as they must have known about Froogle.com and the registration and use must have been an attempt to cause confusion and thereby divert business for commercial gain. In the light of the foregoing, the Complainant asserts that it has rights in respect of a name or mark which is identical to the disputed domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to each Domain Name at issue; and that the Domain Name in this case, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

The Complainant in this case has asserted that it has rights in the name and mark FROOGLE and that this is identical or similar to the Domain Name at issue.

The Complainant submitted details of a large number of domain name registrations and several trade mark applications, most of which would certainly not be relevant if consideration of “Rights” were clearly to be restricted under the policy to “Rights at the time of registration of the Domain Name.”

However, “Rights” under the Policy are not necessarily so limited. The definition of an Abusive Registration (see below) plainly contemplates (at ii)) that an abuse may arise after registration and one may logically conclude that the drafters of the Policy must correspondingly have intended to allow for relevant “Rights” to have arisen after registration. However, in relation to the definition of Abusive Registration at paragraph i) below there is an express restriction to “at the time when the registration … took place” and, if that definition is to apply, then logically the “Rights” too must have existed at the time of registration as otherwise there would have been nothing to abuse.

The Respondent has argued strongly that at the time of registration the Complainant did indeed have no relevant rights in FROOGLE.

As for the Complainant’s contemporaneous threats issued by their US Counsel alleging that “registration of the domain name constitutes trademark infringement”, the Expert would be inclined to agree with the Respondent that it is unlikely that the Complainant had any rights sufficient to substantiate such a threat to a UK business for action taken in the UK. At that time, it would potentially have been open to the Respondent to challenge such threats as unjustified, as was the case in Prince plc. v. Prince Sports Group Inc. [1998 FSR 21], if the Respondent had had genuine interests of its own to protect.

However, for the purposes of the Policy it is not necessary that the Complainant should have had sufficient Rights to pursue a trade mark infringement or a passing-off action, nor is it necessary that the Rights be in the UK – “Rights” as explicitly defined “includes, but is not limited to, rights enforceable under English law”.

As noted above, the Complainant has at least two earlier domain name registrations and an earlier US trademark application which predate the registration of the Domain Name at issue.

In the Expert’s view, therefore, the Complainant’s evidence is sufficient to establish a basic claim to the existence of common law rights in the name FROOGLE in a domain name and as an unregistered trade mark to the extent required under the Policy.

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name (or mark), which is identical or similar to the Domain Name at issue.

The Complainant also has to show that each Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. primarily for the purpose of unfairly disrupting the business of the Complainant;

ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or

iv. It is independently verified that the Respondent has given false contact details to [Nominet].

Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

However, ultimately, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The Complainant has made extensive allegations of misfeasance by the Respondent falling in most of the exemplary categories listed above.

In the Expert’s opinion, most of these allegations are based on unconvincing evidence and are not adequately substantiated. In particular, the Complainant has sought to make much of the Respondent’s alleged demands for excessive compensation for transferring the domain name. This allegation is principally based on unsubstantiated, second-hand hearsay in the form of an unsworn note reporting what a Mr. Scarr (whose own motives must themselves surely be open to question) alleges Mr. Noad said to him. It is expressly denied at first hand by Mr. Noad.

Otherwise, the Complainant has sought to use correspondence between the parties and their respective legal advisors as evidence of the Respondent’s unjustifiable demands. Yet it is quite clear that this correspondence was in contemplation of a negotiated settlement aimed at avoiding legal proceedings either in Court or under the Policy. Both the Complainant’s solicitors and the Respondent’s advisors variously marked such correspondence as “Without Prejudice”, and the Expert has little doubt that, whether or not it was so marked, most of that correspondence was made in a good-faith effort by both sides to settle the dispute. As such, there is also little doubt that the average legal adviser in the UK would expect that such correspondence would normally be excluded from consideration in any subsequent legal proceedings.

In WH Smith Ltd v. Peter Colman [2001] FSR 9, the Court of Appeal, for example, considering the circumstances in which "without prejudice" privilege might be waived, held specifically that: "To fall outside the protection of the "without prejudice" rule, [a] communication had to disclose "unambiguous impropriety".

Other Experts have suggested that a less restrictive approach is justified in DRS proceedings. The present Expert accepts that the DRS, as a private administrative proceeding, does not necessarily exclude consideration of such correspondence. However, the problem remains that, unless the parties and advisers involved are all aware of this distinction, and on the Respondent’s side they are always less likely to be so (as is apparent in the present case), then they will reasonably assume that normal rules apply and that settlement negotiations will not be exposed in subsequent proceedings. They may then effectively be deceived, whether intentionally or not, and may be unfairly prejudiced when such negotiations are subsequently disclosed without warning.

In this Expert’s view, therefore, as previously expressed in the concluding observations in the Decision in DRS Case 00058 [nokiaringtones.co.uk], and for the same reasons as would apply in Court proceedings, caution should be shown in considering evidence which might otherwise be privileged in Court proceedings. (The same issues were also considered in DRS Case 01009 [humbersideairport.co.uk; humbersideinternationalairport.co.uk] where the present Expert decided to take such evidence into account.)

If a Complainant wishes such evidence to be taken into account without reservation then, in the present Expert’s opinion, it should be incumbent on the Complainant to first put the Respondent on notice that the Nominet Policy allows for all such correspondence to be presented in evidence (other than in the Nominet Mediation stage – which only takes place after a Complaint has been filed).

And, because this practice is so inconsistent with the likely expectations of the UK legal profession in general (who will not be familiar with the way the Nominet DRS is operated), and because there is no specific mention of this in the published Policy or Procedure, the Expert also suggests that it would be highly desirable for Nominet itself to provide a suitable warning in the DRS FAQ e.g. under a Heading such as “Are “Without Prejudice” discussions and correspondence treated as privileged and not considered in DRS Proceedings?” Answer: (e.g.) Not necessarily – such correspondence may be put before an Expert who is free to consider it - only discussions during Nominet’s Voluntary Mediation may not be revealed to, and may not be considered by, an Expert when making a decision.

In the present case, the Complainant did not warn the Respondent that it could put the settlement correspondence in evidence before a Nominet Expert, and the Expert does not consider the evidence of the settlement correspondence to reveal any “unambiguous impropriety” sufficient to merit its consideration in those circumstances (although the reports relating to the Respondent’s withdrawal from settlement negotiations gave the Expert pause for thought). Ultimately, as it is clear that the Respondent’s legal advisers (who might otherwise have been expected to pick up on this point) were not involved in preparation of the Response, the Expert believes that the Respondent, not being legally qualified, should be particularly entitled to a warning before such evidence is used against him, and so has given the Respondent the benefit of the doubt on this evidence.

Even if the Expert were inclined to admit the settlement correspondence, however, the Expert considers it marginal whether the initial “Without Prejudice” offer via the Respondent’s legal advisors was really so excessive as to automatically condemn the Respondent’s motives, given that in such settlement negotiations one might reasonably expect a party also to seek to cover its legal costs, if possible. Nor can the subsequent intention to settle for £500 plus £1000 of Google Adwords be held against the Respondent, because this was actually a counter-offer made by the Complainant’s solicitors.

The Complainant also implied that the Respondent may have registered other domain names in which the Complainant might have rights, but produced no evidence to support such a claim.

Thus the Expert is not convinced that these factors have been demonstrated sufficiently by themselves to enable the conclusion to be drawn that Domain Name is an Abusive Registration.

The evidence also shows that the Domain Name has not been effectively used (www.froogle.co.uk was quickly shut down by the Respondent early in the course of the dispute) so that it could not be said to have been used in manner which subsequently took unfair advantage of the Complainant’s Rights.

However, there is still the extraordinary coincidence of Google’s launch of its FROOGLE service and the Respondent’s improbably fortuitous registration of froogle.co.uk.

The Respondent has asserted that coincidence is all it was. It claims to have intended to use the domain frugal.co.uk for a website on the theme of “saving money”, but that frugal.co.uk was not available so they went for froogle.co.uk. Why not frugal.org.uk which appears to have been unregistered at the time and would seem more appropriate for a “free help and information site” as stated on the Respondent’s original home page, or frugal.me.uk or “frugally” or “frewgal”? Was it another coincidence that this “frugal” connection is also cited on froogle.com, where it is stated: “Froogle is a play on the word "frugal," meaning thrifty, and the name "Google," which has come to stand for excellence in search technology.”?

Google might not have had any great rights or reputation in FROOGLE at the time of registration of the Domain Name, but it incontrovertibly had extensive rights in GOOGLE and the Expert finds it incredible that the similarity with the –OOGLE ending would not have alerted a web-savvy business like LWD Internet to the potential for conflict. It also seems altogether too improbable that an internet business needing a new domain would not look up the .com equivalent (i.e. froogle.com) first or as well and have immediately been alerted again to the likelihood of a dispute. LWD Internet, after all, itself already operates both from www.lwdinternet.co.uk and www.lwdinternet.com.

The Respondent says that only “…“industry insiders”, i.e. those who regularly read the IT news websites, will have known about froogle.com” in advance of its launch in December 2002.

All the evidence rather suggests to the Expert that, on the balance of probabilities, LWD Internet as an ISP, and its personnel, whether acting under the guise of Surrey Web Design or otherwise, would have been just such “industry insiders”.

Ultimately, therefore, the Expert finds the Respondent’s claims of pure coincidence stretch credulity too far. On the balance of probabilities, and having regard to all the circumstances, even if it is not entirely clear what the full extent of the Respondent’s speculative intent was at the time of registration, the Expert believes that the Respondent would have been aware of the Complainant’s launch or intended launch of froogle.com and did register the Domain Name with just some such speculative intent. At the very least the Domain Name has been effective as a blocking registration. The Respondent will be well aware that .co.uk Domain Names are the business names of choice for the UK and that for Google, the options of froogle.org.uk or froogle.me.uk would not have been practical alternatives.

Consequently, the Expert concludes that the Domain Name has been registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights, and that it is indeed an Abusive Registration for the purposes of the Policy.

It follows that the Expert also dismisses the Respondent’s claim that the Complaint in this case is an Abuse of Process in the form of “Reverse Domain Name Hijacking”. The Complainant has an entirely justifiable claim to rights in FROOGLE and reasonable grounds to assert that the Domain Name was an Abusive Registration, even if not all those grounds have been accepted by the Expert.

Having concluded that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, froogle.co.uk, should be transferred to the Complainant as requested.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Google Inc -v- LWD Internet [2004] DRS 1443 (5 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1443.html Cite as: [2004] DRS 1443