middletons

Complaint in accordance with the au Dispute Resolution Policy www.googlebay.com.au

We enclose a signed copy of the Complaint submitted by Google Inc. to WIPO concerning the domain name www.googlebay.com.au together with the exhibits referred to therein.

DX 405 Melbourne telephone: +61 3 9205 2000 telephone: (03) 9205 2067 telephone: (03) 9640 4375

www.middletons.com facsimile: +613 9205 2055 tony.watson@middletons.com jonathan.feder@middletons.com

COMPLAINT TRANSMITTAL COVERSHEET

Attached is a Complaint that has been filed against you with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the Center) pursuant to the au Dispute Resolution Policy (the Policy) approved by the auDA Board on 13 August 2001, the Rules for au Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for au Dispute Resolution Policy (the Supplemental Rules).

The Policy is incorporated by reference into your Registrant Agreement with the Registrar(s) of your domain name(s), in accordance with which you are required to submit to a mandatory administrative proceeding in the event that a third party (a Complainant) submits a complaint to a dispute resolution service provider, such as the Center, concerning a domain name that you have registered. You will find the name and contact details of the Complainant, as well as the domain name(s) that islare the subject of the Complaint in the document that accompanies this Coversheet.

You have no duty to act at this time. Once the Center has checked the Complaint to determine that it satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules, it will forward an official copy of the Complaint to you. You will then have 20 calendar days within which to submit a Response to the Complaint in accordance with the Rules and Supplemental Rules to the Center and the Complainant. You may represent yourself or seek the assistance of legal counsel to represent you in the administrative proceeding.

The Policy can be found at http://www.auda.org.auldocs/auda 2002 22.pdf

The Rules can be found at http://www.auda.org.auldocs/auda 2002~22.pdf

The Supplemental Rules, as well as other information concerning the resolution of domain name disputes can be found at. http://arbiter.wipo.int/domains/cctid/ruieslindex.htmi#au

A model Response can be. found at

http://arbiter.wipo.int/domains/fiiing/au/response.doc.

Alternatively, you may contact the Center to obtain any of the above documents. The Center can be contacted in Geneva, Switzerland by telephone at +41 22 338 8247, by fax at +41 22 740 3700 or by e mail at domain. disputes@wipo. int.

You are kindly requested to contact the Center to provide the contact details to which you would like (a) the official version of the Complaint and (b) other communications in the administrative proceeding to be sent.

A copy of this Complaint has also been sent to the Registrar(s) with which the domain name(s) that islare the subject of the Complaint islare registered.

By submitting this Complaint to the Center the Complainant hereby agrees to abide and be bound by the provisions of the Policy, Rules and Supplemental Rules.

Before the:

WORLD INTELLECTUAL PROPERTY ORGANIZATION

ARBITRATION AND MEDIATION CENTER

Google Inc.

(Complainant)

v Disputed Domain Name

Dmitri Rytsk

(Respondent) www.googlebay.com.au

docs 1756254v1 SHAR

This Complaint is hereby submitted for decision in accordance with the au Dispute Resolution

Policy, adopted by the auDA Board on 13 August 2001 (the Policy), the Rules for au Dispute

Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name

3. The Complainant's authorised representative in this administrative proceeding is:

4. The Complainant's preferred method of communications directed to the Complainant in the

5. According to Intaserve's Who Is database, which was identified to be the applicable registry

Print outs of the results for the Geek Tools Who Is Proxy search conducted on 30 October 2006 and the Intaserve Who Is database search conducted on 22 January 2007 are provided as Annexure A to this Complaint.

6. All information known to the Complainant regarding how to contact the Respondent is as

On or about 31 October 2006, the Complainant became aware that Mr Dmitri Rytsk had registered the Disputed Domain Name (see Annexure A) and filed Australian Trade Mark Application No. 1118972 "GOOGLEBAY" (the Trade Mark). On 30 October 2006 Middletons searched the Australian Trade Mark Online Search System (ATMOSS) for this trade mark application and found that the details of the Applicant of the Trade Mark (ie the Respondent to this Complaint) is:

A print out of the relevant ATMOSS entry is attached as Annexure B to this Complaint.

On 3 November 2006, Middletons sent a letter of demand to the Respondent at the address recorded on ATMOSS, demanding, inter alia, the immediate transfer of the Disputed Domain Name. A copy of the letter of demand sent by mail to the Respondent is provided as Annexure C to this Complaint.

On 15 November 2006 Middletons received an email in response to its letter dated 3 November 2006 from the Respondent. In this email the Respondent advised Middletons of his new postal address in addition to further contact details as stated below:

Postal address: PO Box 4102

North Curl Curl NSW 2099

Email address: sales@manlyelectronics.com.au

Telephone: +612 9401 2770

Mobile telephone: +614174 56095

A copy of that email is provided as Annexure D to this Complaint.

On 7 May 2007, Middletons conducted a search for the ABN 88842732240 using the ABN database located at domain name www. a br. business. gov. au. This search revealed that the Respondent has registered this ABN. A copy of the search results obtained are provided as Annexure E to this Complaint.

Ill The Domain Name and Registrar

Rules para 3(b)(vi) and (vii)

7. This dispute concerns the domain name identified below:

www.googlebay.com.au

8. The registrar with which the domain name is registered is:

IntaServe

QVB Chambers

Level 5, 143 York Street,

SYDNEY NSW 2000

Australia

IV Jurisdictional Basis for the Administrative Proceeding

Rules para 3(b)(xv), Policy para 2. 1

9. This dispute is properly within the scope of the Policy and the Administrative Panel has

jurisdiction to decide the dispute. The domain was created on 11 June 2006. Pursuant to

clause 2.1 of the auDA Dispute Resolution Policy, all domain name licenses issued in open

2LDs from 1 August 2002 or renewed since that date are subject to mandatory

administrative procedure under the auDRP. A copy of an email f rom auDA confirming the

creation date is provided as Annexure F to this Complaint.

docs 1756254v1 SHAR

10. The registration agreement, pursuant to which the domain name, the subject of this

Complaint is registered, incorporates the Policy. A true and correct copy of the domain

name dispute policy that applies to this domain name is provided as Annexure G to this

Complaint. It can be located online at http:llwww.intaserve.com/domainnames/policies.htmi.

A. The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Complainant is the registered owner of the following Australian Trade Marks:

Australian Trade Mark Class(es) Priority Date

Trade

Mark No.

information resources; mouse pads

38: Providing multiple user access to proprietary

collections of information by means of global

computer information networks

42: Computer services, namely, providing

software interfaces available over a network in

order to create personalized on line information

services; extraction and retrieval of information

and data mining by means of global computer

networks; creating indexes of information,

indexes of web sites and indexes of other

information sources in connection with global

computer network; providing information from

searchable indexes and databases of

information, including text, electronic documents,

databases, graphic and audio visual information,

by means of global computer information

networks

1130283 GOOGLE 36: Charitable fundraising; providing grants to 02/0312006

charitable organizations; financial services;

financial transaction processing services;

payment and billing services

38: Telecommunication services; data

transmission and reception services via

telecommunication means; electronic exchange

of voice, data, and graphics accessible via

computer and telecommunication networks; local

and long distance transmission of voice, data,

graphics via computer and telecommunications

networks; providing multipie user access to a

global computer information network; Internet

cafe services, namely, providing

telecommunications connections to the Internet

in a cafe environment; online chatroom, bulletin

board and discussion group services; electronic

mail services; workgroup communications

services over computer networks; instant

messaging services; voice over ip services; video

and audio conferencing services; computer

communication services; wireless communication

services; telephone communication services;

mobile phone communication services; search

engine services

(the Trade Marks).

Print outs of the Trade Marks entries from ATMOSS are included as Annexure H to this Complaint.

docs 1756254v1 SHAR

The Complainant is a public company incorporated in the Unilled States of America and its main business is focused on internet search services. The Complainant has established a subsidiary company in Australia being Google Australia Pty Ltd which commenced operations in March 2003. Attached and marked Annexure 1 is a copy of the press release announcing the commencement of these operations.

The Complainant operates web sites at many international domains, including Australia which is located at domain name www.google.com.au. However, the Complainant's most visited website is www.google.com. The Complainant has amassed a powerful and widespread reputation in the Trade Marks, with the "Google" search engine widely recognised as the world's predominant and "best search engine". The Complainant owns the second largest web property worldwide and its GOOGLE websites attract 475 million unique visitors per month. The Complainant currently operates offices in Ireland, Australia, Brazil, Canada, Denmark, Finland, France, Germany, India, Italy, Japan, Korea, Mexico, Netherlands, Norway, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

The Complainant's brand, which consists of the word "GOOGLE", has also been recognised as being famous by a range of sources including consumer votes through brandchannel.com. The Complainant's brand has been found to be the most well known brand globally in 2002, 2003, 2004, 2005 and 2006. Attached and marked Annexure J are a number of printouts from the brandchannel.com website which list the Complainant's brand as in the top 5 in the world from 2001 to 2006. The Complainant was ranked by the Wall Street Journal as the third most well known company in the world. Attached and marked Annexure K is a copy of the survey conducted by the Wall Street Journal. The Complainant was also recently added to the Nasdaq 100, an index of the top 100 largest non financial companies.

The Complainant derives its revenue by providing businesses of all sizes with the opportunity to advertise online using the Google AdWords program, a program developed by the Complainant. When a user of the Complainant's search engine enters a query, along with the results for that query, Google AdWords provides links to businesses relating to the search query. Through Google Adwords, thousands of Australian advertisers are marketing products and services through www.google.com.au.

The Complainant has built up a substantial reputation in the "GOOGLE" trade mark in Australia through both the internet and the following means:

Internet: The Complainant's Trade Marks are featured prominently in many areas on the internet connected with the many services provided by the Complainant. These include web log services, email services, news services, video and image search services, document search services, and search engines. Attached and marked Annexure L is a sample of printouts from the many websites affiliated with or operated by the Complainant which feature the Complainant's Trade Marks prominently.

Stationery: The Complainant has produced invoices, envelopes, business cards and letterhead which it uses in its Australian offices. Attached and marked Annexure N are samples of these invoices, envelopes, business cards and letterhead which feature the Complainant's Trade Marks.

(iv) Magazines & Journals: The Complainant does not produce print advertisements as a matter of course, however it is regularly featured in discussions on the internet, relating to technology and business. Attached and marked Annexure 0 are a range of articles which refer to and use the Complainant's Trade Marks prominently.

Since 2002, the Complainant has spent in excess of $1.6 billion worldwide promoting the Trade Marks. In 2006, the Complainant's revenue was in excess of $10 billion

The Complainant relies on the Trade Marks for its reputation and recognition throughout the world, with both consumers (ie end users) and its corporate clients. The Disputed Domain Name is confusingly similar to the Trade Marks owned by the Complainant.

is not a word which is in use in the Enghsh language. The Complainant submits that it is a distinctive word which would not have been legitimately chosen for use by the Respondent as part of its "googlebay. com.au domain name unless it was attempting to trade off the Complainant's rights in the Trade Marks.

As the first part of the "googlebay" domain name, "Google" is the dominant component of the name that will resonate with consumers who will, due to the

Complainant's substantial reputation, immediately make an association with the Complainant. Adding the suffix "ebay" to the word "Google" gives the impression that "googlebay" is a subbranch of the Google operation and related to the auction website, ebay, which will be confusing and misleading for consumers who will therefore assume that the Respondent's website is related to the Complainant. Upon viewing the googlebay.com.au domain name, Australians and people from around the world would expect that the name would be owned by the Complainant.

Increasing the likelihood of confusion is the fact that, like the Complainant, the Respondent is using the domain to host a website providing internet search services.

Given the widespread reputation of the Complainant's Trade Marks, the distinctive character of the Complainant's mark GOOGLE, the dominant component of the Disputed Domain Name, and that the Respondent is using the domain name in relation to similar services to which the Complainant has established its reputation in the Trade Marks, it is clear that the Disputed Domain Name is confusingly similar to the Trade Marks.

B The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant notes that, under the Domain Name Eligibility and Allocation Rules for the Open 2LDs, the com.au 2LD is designated for commercial purposes and there is no evidence that the Respondent is using or has used the Disputed Domain Name or a corresponding name in connection with any bona fide offering of goods or services.

The Respondent is not commonly known by the Disputed Domain Name. A search of the White Pages and Yellow Pages conducted by Middletons on 19 January 2007 revealed no listing for a business conducted by reference to the business name "GOOGLEBAY". Such searches are provided as Annexure P to this Complaint. On 10 January 2007 the Complainant filed a Notice of Opposition in relation to Australian Trade Mark Application No. 1118972, filed by the Respondent for the mark "GOOGLEBAY". Attached as Annexure Q is the Notice of Opposition filed by the Complainant, in which the grounds for opposition ate set out at in detail. The Complainant believes it is likely that the Registrar of Trade Marks will find that the Respondent is not entitled to register the "GOOGLEBAY" mark.

docs 1756254v1 SHAR

The Respondent is not making a legilimate fair use of the domain but rather is using the domain in an attempt to intentionally divert traffic from the Complainant's websites and mislead internet users into assuming some kind of connection exists between the Respondent's website and the Complainant. This point is expanded upon in paragraphs 1 1.A (above) and 1 1.C (below) especially since the Respondent is using the Disputed Domain Name as a website to allow consumers to conduct searches using a range of internet search engines, the principle service that is offered by the Complainant.

The Complainant submits that the Disputed Domain Name was registered or is being used in bad faith on the grounds that, as noted above, "Google" is an invented, highly distinctive word which the Respondent would not have legitimately chosen for use as the major component of its domain name unless it was attempting to trade off the Complainant's rights in the Trade Marks. The Complainant submits that its reputation in the mark "Google" is so substantial and widespread that it is not conceivable that the Respondent would not have had actual notice of the Complainant's rights in the mark when he registered the Disputed Domain Name. (indeed, the Complainant's website www.google.com is even named on the Respondent's website hosted at the disputed domain as an example provided in the instructions regarding how to use the site's "DNS Who Is" function). Attached as Annexure R is a print out of the Respondent's website (printed by Middletons on 22 January 2007) illustrating this.

The fact that the Respondent is using the domain to host a website offering internet search services, that is, the same type of services provided by the Complainant, further indicates that the Respondent has acted in bad faith in registering and using the Disputed Domain Name.

The Respondent has intentionally attempted to attract Internet users familiar with the Complainant, its services and reputation and create confusion as to the existence of an affiliation, sponsorship, endorsement or other connection with the Complainant.

In The University of Windsor v. Modem Empire Internet Limited (WIPO Case No. D2006 1238) the Panel recognised that the facts that the trade marks and domain name of the Complainant were registered long before the registration of the disputed domain name by the Respondent, constituted demonstrations of bad faith. In this case, the Complainant's priority dates in relation to the Trade Marks date back to

1998, which is 8 years prior to the Respondent registering the Disputed Domain Name in 2006.

12. For reasons described above, the Complainant requests that the Administrative Panel

appointed in this administrative proceeding issue a decision that the Disputed Domain

13. The Complainant elects to have the dispute decided by a single member Administrative Panel.

In the event the Respondent designates a three member Administrative Panel, the Complainant nominates the following persons, one of whom the Center shall attempt to appoint to the Administrative Panel in accordance with Paragraph 6 of the Rules and Paragraph 7 of the Supplemental Rules:

14. In accordance with paragraph 3(b)(xiii) of the Rules, the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the Courts of the state where the head office of Intaserve, the registrar of the Disputed Domain Name, is located, that jurisdiction being New South Wales, Australia.

15. The Complainant is not aware of a any other legal proceedings that have been commenced or terminated in connection with or relating to the Disputed Domain Name.

6, A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent by:

Mail: Mr Dmitri Rytsk

xxxx

NORTH CURL CURL NSW 2099

and

Mr Dmitri Rytsk

PO Box 4102

NORTH CURL CURL NSW 2099

AUSTRALIA

Email: sales@manlyelectronics.com.au

17. A copy of this Complaint has been sent to the concerned registrar by:

Intaserve

PO Box Q1114

QVB

SYDNEY NSW 1230 Australia

Facsimile: +61 2 9283 5110

X1PAYMENT

Rules para 19; Supplementary Rules Annex D

18. As required by the Rules and Supplemental Rules, payment in the amount of AUD$1,500 has been made to WIPO by cheque.

XII CERTIFICATION

Rules para 3(b)(xiv)

19. The Complainant agrees that its claim and remedies concerning the registration of the Disputed Domain Name, the dispute, or the dispute's resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the dispute resolution provider and Panelists, except in the case of deliberate wrongdoing (b) the concerned registrar(s), (c) the registry administrator, (d) auDA as well as their directors, offices, employees and agents.

20. The Complainant certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument.

docs 1756254v1 SHAR

SCHEDULE OF ANNEXURES

A. Print outs of the results for the Geek Tools Who Is Proxy search conducted on 30 October

2006 and the Intaserve Who Is database search conducted on 22 January 2007

B. Print out of the ATMOSS entry for Australian Trade Mark Application No. 1118972

"GOOGLEBAY" dated 30 October 2006

C. Copy of the letter of demand from Middletons to the Respondent dated 3 November 2006

D. Email from the Respondent to Middletons dated 15 November 2006

E. Copy of results for www. abr. business. gov. au ABN database search for ABN 88842732240

dated 7 May 2007

F. Copy of email from auDA dated 18 January 2007

G. Copy of the IntaServe domain name dispute policy

H. Print outs of the ATMOSS entries for the Complainant's Trade Marks

1. Copy of the press release announcing the commencement of the operations of Google

Australia Pty Ltd in March 2003

J. Print outs from the www.brandchannel.com website

K. Copy of Wall Street Journal survey

L. Print outs from various websites affiliated with or operated by the Complainant which feature

the Complainant's Trade Marks

M. Copies of press releases featuring the Complainant's Trade Marks released in Australia

N. Samples of invoices, envelopes, business cards and letterhead featuring the Complainant's

Trade Marks

0. Samples of various articles which refer to and use the Complainant's Trade Marks

prominently

P. Print out of results for White Pages and Yellow Pages searches for "GOOGLEBAY" dated

19 January 2007

Q. Copy of Notice of Opposition filed by the Complainant in relation to Australian Trade Mark

Application No 1118972 "GOOGLEBAY" dated 10 January 2007

R. Print out from www.googlebay.com.au dated 22 January 2007

docs 1756254v1 SHAR