Góogle is not Google

Andrés Monroy-Hernández 2012-03-08

Back in July, I learned about IDN homograph attacks. I decided to check if two of the most visited websites in the world, Google and Facebook, were available in slightly different spellings (góogle.com and fácebook.com). To my surprise, both domains were available. So I purchased them, and set them to redirect to my Google+ and Facebook profile.

Almost six months later, I got an email from the Google Trademark Team asking to transfer góogle.com to Google (they also offered to   refund the cost of the domain up to $100, which seemed totally reasonable). I told them I was happy to give it back to them, but I also explained that the goal of the website was educational. I even changed the redirect I had to a page stating the goal more explicitly along with the Wikipedia definition for homograph attack.

Their response was surprisingly nice. They let me keep the domain as long as I continue to use it for educational purposes. So kudos to the Google Trademark Team!

As a side note, they also mentioned that someone claiming to be “Andres Monroy” purchased other domains  googlemexico.net, googleprofiling.net, perfilesgoogle.com) and started to use them in more commercial-looking ways. The whois record confirms that. I don’t know if it’s just a coincidence, but since my July post made it to a popular website about technology in the Spanish speaking-world, I am wondering if it is just coincidence or if there’s something more to it. Regardless, I made it clear to Google that I do not own those other domains.

Below is the e-mail exchange.

From: Google Trademark Team <****@google.com> Date: Tue, Dec 6, 2011 at 10:12 PM To: ******@gmail.com, ****@contact.gandi.net

Dear Mr. Monroy-Hernández:

Google is the owner of the well-known trademark and trade name GOOGLE, as well as the domain name GOOGLE.COM. As you are no doubt aware, GOOGLE is the trademark used to identify our award-winning search engine, located at www.google.com. Since its inception in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search engines in the world. Google owns numerous trademark registrations and applications for its GOOGLE mark in countries around the world.

Google has used and actively promoted its GOOGLE mark for a number of years, and has invested considerable time and money establishing exclusive proprietary rights in the GOOGLE mark for a wide range of goods and services. As a result of its efforts, the GOOGLE mark has become a famous mark and a property right of incalculable value.  We allow use of our logo only if we have granted express written permission; please see our Brand Permission guidelines at www.google.com/permissions/guidelines.html.

We recently learned that you have registered, without Google’s permission, the domain names googlemexico.net, googleprofiling.net, perfilesgoogle.com, and góogle.com (the ‘Domain Names’), and you are using our famous GOOGLE mark as part of your business name  googlemexico.net] advertised on your website and to redirect to your own profile.  Because these Domain Names include the famous GOOGLE mark, and your business name includes our trademark, they falsely suggest to Internet users that Google has approved or authorized your websites and your activities.  From a legal standpoint, your use of the GOOGLE trademark without our permission constitutes trademark infringement and unfair competition.  Your use of these Domain Names and our trademark is likely to mislead consumers into believing that some association exists between Google and you, which tarnishes the goodwill and reputation of Google’s services and trademarks.

As a trademark owner, Google is required to take action to stop use of its trademark that could lead to consumer confusion.  We would like to be able to resolve this in a cooperative manner, rather than have to to proceed with an arbitration proceeding under the ICANN Uniform Dispute Resolution Policy (‘UDRP’).  Please keep in mind that under similar circumstances, Google has prevailed in numerous UDRP actions. These decisions are located online at www.icann.org/udrp/udrpdec.htm.

We hope that your actions have resulted from your misunderstanding of trademark law, rather than a deliberate attempt to trade on the goodwill of the Google trademark and confuse customers regarding Google’s endorsement of your website.  However, in order to prevent user confusion, we must request that you take the following actions within 14 days and send us an email confirming that you have complied:

1.  Deactivate the Domain Names within 7 days;

2.  Confirm whether you will cancel the Domain Name registrations or transfer the Domain Names to Google.  If you decide to transfer the Domain Names, we will reimburse your registration fees up to $100, with proof of your payment of the fees;

3.  Cancel any business name filings (e.g. fictitious business name, corporate filings) you have made for business names that include the GOOGLE mark, within 7 days; and

4.  Agree not to adopt another domain name that includes the GOOGLE mark;

5.  Agree not to use the GOOGLE Logo on your website in the future without Google’s permission.

We look forward to your cooperation in bringing this matter to a close.  If you have any questions, please let us know.

Thank you,

The Google Trademark Team

———- From: Andrés Monroy-Hernández <andresmh@****> Date: Wed, Dec 7, 2011 at 2:36 AM To: Google Trademark Team <****@google.com> Cc: ***@contact.gandi.net

Hello. Indeed, I purchased the domain góogle.com but I did not purchase ANY of the other domains you mention.
I changed the content of the góogle.com page to explicitly state the educational purpose of the domain. It used to be just a redirection page.
Please let me know if that satisfies your needs. Otherwise I am happy to transfer the domain to you, although I am not sure how to do that and I would need some assistance and to allocate some of my time to it. So I hope the changes I made are satisfactory.
———-

From: Google Trademark Team <****@google.com> Date: Fri, Dec 9, 2011 at 6:40 PM To: Andrés Monroy-Hernández <andresmh@****>

Dear Mr. Monroy-Hernández:

Thank you for your cooperation.  We are currently comfortable with your use of the Google (with an accent) domain name [góogle.com] as an educational site, but if you decide to discontinue this educational use, please contact us so that we can assist in the transfer of the domain name.

Also, please confirm if “*****@gmail.com” is one of your email addresses, as that is the address in the ownership records for Googlemexico.net, etc., with “Andres Monroy” shown as the contact.

Again, thank you,

The Google Trademark Team ———-

From: Andrés Monroy-Hernández <andresmh@***> Date: Fri, Dec 9, 2011 at 8:21 PM To: Google Trademark Team <****@google.com>

Thanks a lot for your understanding.

I can guarantee that, for as long as I have ownership of the domain, I will continue using it for educational purposes. I can also confirm that I do NOT own the email ******@gmail.com,  Googlemexico.net, nor any of the other domains you had previously mentioned.