Friday, September 24, 2004 dispute won by Google

April 21, 2004

Google has been awarded ownership of the domain name, which was registered by a UK web hosting company the day after the world's most popular search engine launched Froogle as its product search service.

Google's apparent mistake was to launch its service on 11th December 2002 – and to seek to register the UK domain name two days later – which left a window of opportunity for LWD Internet to snap it up.

Although Google Inc. had, and other names, and is in the process of registering trade marks for the Froogle brand, it wanted control of the name and got its lawyers involved.

For a while, it looked like the parties would settle: to avoid formal proceedings, a deal was struck comprising a payment by Google of £500 together with credit of £1,000 in a Google Adword account. But negotiations broke down, and no transfer was made.

So Google took its case to Nominet, the registry for all domain names ending .uk. Nominet operates a dispute resolution service similar to that provided by the World Intellectual Property Organisation for other disputes, particularly those involving .com, .net and .org domain names.

LWD argued that the registration had been in good faith, that the “timing of our domain registration and the launch of was entirely coincidental.” But the panel didn't buy that argument, saying it stretched “credulity too far”.

Nominet panellist Keith Gymer agreed with LWD that Google had insufficient trade mark rights in the UK in the Froogle brand – which had only been launched in the US. However, he reasoned that, for the purposes of the dispute:

-- “It is not necessary that [Google] 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".

He pointed out that the Nominet dispute Policy defines "Rights" as including, but not being limited to, rights enforceable under English law.

Concluding that LWD did register the name with some "speculative intent,” he ordered that it be transferred to Google.

David Woods, a dispute resolution specialist with Masons, the law firm behind OUT-LAW.COM comments:

"The case provides a useful lesson for anyone launching a new brand. Bringing a case before Nominet costs the complainant a fee of £750 plus VAT. If lawyers are instructed, the complainant has their fees as well. These fees are not recoverable in the event of success in a Nominet or WIPO case. But disputes like this are often avoidable."

Woods points to another example, from 2000, when PDA-maker Palm announced its new MyPalm service before securing the corresponding domain name. It then had to buy from the owner, who had already been using it for e-mail.

"With domain names, the cost of registration is cheap. For a company with an international profile like Google's, it is advisable to obtain a range of defensive registrations before announcing any new brand. Google could have had the name for £10 if it had registered it before announcing the service."



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