Groovle beats Google in name game

It would be just like the battle between David and Goliath – if David had changed his name to Groliath.

A tiny Oakville, Ont.-based tech startup has scored a rare victory against Google Inc. GOOG-Q

over a domain name the Web giant claimed was “confusingly similar” to its own.

Groovle.com, a website that allows users to customize the background image on a version of the Google home page, found itself before the National Arbitration Forum, a U.S.-based body that adjudicates disputes over Web addresses. Google claimed the startup was clearly trying to take advantage of the search engine’s name to drive traffic to its site. Groovle’s founders – three thirtysomething entrepreneurs who went to the University of Guelph together – argued that the website’s name actually derives from the words “groove” or “groovy.”

The NAF panel, composed of two retired judges and a law professor, bought the argument, handing down what Groovle co-founder Jacob Fuller says is only the second decision in 65 similar cases that didn’t go Google’s way.

“The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant’s mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark,” the arbitration panel said in its ruling, quoting from what appears to be the only other case in which Google lost such a domain name dispute.

(In that case, Google sued a shopping search engine called Froogles.com, alleging that its founder was deliberately trying to cash in on the Google brand.)

With Google’s track record, the odds seemed stacked against Groovle’s founders, Mr. Fuller and Ryan Fitzgibbon.

The two, who have been friends since the ninth grade, run the website as a side business – they spend most of their time generating leads for local Oakville businesses and selling products online.

But since the NAF ruled in their favour, their little-known website has garnered attention in some of the world’s biggest technology blogs, giving it more publicity than its founders could have ever hoped for.

Groovle is one of several businesses that rely on Google’s custom search engine technology. Essentially, such sites offer a gateway to Google, usually with some spin of their own – in Groovle’s case, the ability to customize the background image on the site.

However Mr. Fuller, 33, contends that the name Groovle wasn’t picked because it sounded the same as Google.

“We just threw out a bunch of ideas, and Groovle stuck,” he said. “As in: ‘a groovy custom search engine.’” Groovle’s problems with Google surfaced this summer, when the search giant objected to the name. Mr. Fuller said he turned to Zak Muscovitch, a Toronto lawyer who has been handling domain name cases for the past 10 years. Groovle made changes to the site’s homepage, adding a disclaimer that the site “is not owned, operated, sponsored or endorsed by Google.”

While Mr. Muscovitch believed those changes were enough, Google did not. This October, the California-based company took its case against Groovle to the Internet Corporation for Assigned Names and Numbers, the body charged with managing the Internet’s domain name system.

This isn’t the first time Google has gone to great lengths to protect its brand name. In previous cases before the NAF, the company successfully argued the “confusingly similar” case against such sites as googlr.com, googld.com and googlesex.com – winning control of those domain names and redirecting them (with the exception of googlesex.com) back to the main Google page.

But even the Web’s biggest company cannot fully control its brand name online. For example, Google has so far been unable to shut down Booble, an adult search engine, despite complaining about the name.

The number of Os in Google can also be a problem. Misspelling Google.com with three Os instead of two, for example, redirects back to the Google site. Domain name squatters appear to have gotten their hands on Goooogle.com (which contains four Os) but not Gooooogle.com (with five). Indeed, Google and various third parties battle over ownership of the Google domain name well into the 30-O territory.

Ironically, Mr. Fuller’s Groovle – like virtually all sites that rely on Google’s custom search engine – depends on Google for its revenue. Once users search for something on Groovle, they are presented with the normal Google search results page, which contains ads. Google gives the custom search sites a cut of the revenue from those ads.

While Google could simply cut Mr. Fuller’s site off from the revenue-sharing program, he says it has yet to do so.

“They just paid us our December revenue today,” he said. “We’re still waiting to hear back from them. I guess we’ll wait and see.”

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