Virgil Cojocaru is a JD candidate at Osgoode Hall Law School
Groovle.com allows a user to adopt one of their custom interfaces or create a ‘website’ with a unique background. This result is then pasted on the Google search screen. Groovle really operates on top of the Google search engine. When one enters a keyword, the results are displayed by Google itself. Google’s ads are also displayed next to the search results and sites like Groovle get a share from these revenues. Even so, Groovle, owned by 207 Media in Oakville, Ontario, found itself before a National Arbitration Forum (NAF) panel, with Google as the complainant.
The panel used the Uniform Domain Name Dispute Resolution Policy (UDRP) to reach a decision. As shown in paragraph 4(a) of the Rules for UDRP, the complainant must prove all three elements sections 4(a)(i) to 4(a)(iii) before a domain name is transferred to the complainant. Hence, Google under s. 4(a)(i) had to first establish that 207 Media’s domain name, Groovle, was identical or confusingly similar to a trademark or service mark in which the complainant had rights.
Google tried to satisfy s. 4(a)(i) by alleging Groovle was using its domain name to take advantage of Google’s reputation. Given the reputation of the Google mark, it was unlikely that 207 Media created “Groovle” independently. Google also tried to distinguish this situation from a case it had lost, Google v. Froogles.com. Here, Google sued a food search engine, alleging that the respondent was confusing web surfers, thus trying to profit from the distinctiveness and reputation of the Google brand. Still, the respondent was successful. Google tried to distinguish this past case from the current situation, arguing that Groovle was far more similar to the Google mark due to its first letter, when contrasted with the Froogles domain name.
207 Media countered by stating that Groovle is distinctive when contrasted to Google; it is not confusingly similar. It argued that its distinctiveness is reinforced by the fact that Groovle was derived independently from the word groovy. Groovle’s creators alleged that while they were playing with the word groovy ‘Groovle’ just stuck. Furthermore, they argued that Google did not provide any evidence of actual confusion between the two marks.
The arbitration panel agreed with 207 Media, quoting the Froogles decision, stating that “the dissimilar letters in the domain name (Groovle) are sufficiently different to make it distinguishable from the complainant’s mark (Google) because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.” Hence, Google failed to satisfy s. 4(a)(i) of the UDRP. As a result, it was unnecessary for the panel to examine s. 4(a)(ii), whether 207 Media had any rights in the domain or s. 4(a)(iii), whether 207 Media’s domain name was being used in bad faith.
Groovle’s troubles with Google began last summer. Groovle’s owners sought legal advice. As a result of that advice, a disclaimer was added to the site stating that the site “is not owned, operated, sponsored or endorsed by Google.” Although this disclaimer is not mentioned in the NAF panel’s discussion, it is included under the parties’ contentions. Did this disclaimer play a role in assuring the the panel that it was unreasonable to conclude that there could be any confusion between the two marks? This issue remains unresolved because the matter is not addressed in the findings of the decision.