Google Inc. v. Mike Sanudo
Claim Number: FA1210001466025
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Mike Sanudo (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com>, registered with Moniker Online Services Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 8, 2012.
On October 8, 2012, Moniker Online Services Llc confirmed by e-mail to the National Arbitration Forum that the <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names are registered with Moniker Online Services Llc and that Respondent is the current registrant of the names. Moniker Online Services Llc has verified that Respondent is bound by the Moniker Online Services Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gmailgifts.com, postmaster@gmailfreeoffer.com, postmaster@gmailfreeoffers.com, postmaster@gmailreward.com, postmaster@mygmailaward.com, postmaster@mygmailawards.com, postmaster@mygmailgift.com, postmaster@mygmailgifts.com, postmaster@mygmailreward.com, postmaster@mygmailrewards.com. Also on October 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names, the domain names at issue, are confusingly similar to Complainant’s GMAIL mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides e-mail and electronic messaging services under the GMAIL mark and own trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GMAIL mark (e.g., Reg. No. 3,150,462 registered October 3, 2006). The <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names are confusingly similar to Complainant’s GMAIL mark. Respondent is not commonly known by any of the disputed domain names.
The disputed domain names resolve to websites which falsely purport to offer users free iPads in exchange for survey participation. Additionally, Respondent has sent out e-mails that purport to be from “Gmail” or “Gmail, Inc. Respondent’s imitation of Complainant in order to solicit users’ information is an e-mail scam which constitutes phishing. Respondent commercially benefits from the operation of its phishing scheme.
In light of the fame and unique qualities of Complainant's GMAIL mark, it is inconceivable that Respondent could have registered the disputed domain names without knowledge of Complainant's rights in the mark. Respondent did not submit a response.
Respondent registered the <gmailgifts.com> domain name on September 25, 2012. Respondent registered the <gmailfreeoffer.com> domain name on October 1, 2012. Respondent registered the <gmailfreeoffers.com> domain name on October 1, 2012. Respondent registered the <gmailreward.com> domain name on September 18, 2012. Respondent registered the <mygmailaward.com> domain name on September 28, 2012. Respondent registered the <mygmailawards.com> domain name on September 28, 2012. Respondent registered the <mygmailgift.com> domain name on September 27, 2012. Respondent registered the <mygmailgifts.com> domain name on September 27, 2012. Respondent registered the <mygmailreward.com> domain name on September 25, 2012. Respondent registered the <mygmailrewards.com> domain name on September 20, 2012.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the GMAIL mark under Policy ¶ 4(a)(i). Complainant has provided evidence of its registration of the mark with the USPTO (e.g., Reg. No. 3,150,462 registered October 3, 2006). Registration of a mark with the USPTO is sufficient to confer rights in a mark. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Accordingly, Complainant has established rights in the GMAIL mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names are confusingly similar to Complainant’s GMAIL mark for the purposes of Policy ¶ 4(a)(i). Each disputed domain name includes Complainant’s GMAIL mark, while adding non-distinctive terms such as “gifts,” “free,” “offer,” “offers,” “reward,” “my,” “award,” “awards,” “gift,” and/or “gifts.” Each disputed domain name also affixes the generic top-level domain (“gTLD”) “.com.” Neither the addition of generic terms nor the addition of a gTLD to a complainant’s mark is sufficient to distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, Respondent’s <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names are confusingly similar to Complainant’s GMAIL mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information on record identifies the domain name registrant as “Mike Sanudo,” which bears no resemblance to any of the disputed domain names. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. The Panel finds that, absent the filing of a Response, there is no evidence in the record to support the assertion that Respondent is commonly known by any of the disputed domain names. The Panel therefore concludes that Respondent is not commonly known by the any of the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s use of the disputed domain names does not coincide with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent uses the disputed domain names to resolve to websites which “falsely purport to offer users free iPads in exchange for survey participation.” This scheme allows Respondent to wrongfully solicit personal information from users who enter such information mistakenly believing that doing so will win them a free iPad. Respondent’s use of the disputed domain names in such a manner indicates an intent to improperly capitalize on the goodwill of Complainant’s GMAIL mark and as such does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s registration and use of the disputed domain names represents bad faith under Policy ¶ 4(b)(iv), because Respondent seeks to realize some sort of financial gain through the operation of its alleged phishing scheme. Respondent attempts to draw Internet users to its websites through the use of confusingly similar domain names, hoping to realize a commercial gain from the confusion it creates. Further, Respondent’s use of the domain names in e-mail correspondence continues the phishing scheme opportunity as well. Registration and use of the disputed domain names for this purpose represents bad faith registration and use under Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names. Such actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Further, Respondent’s imitation of Complainant in order to phish for users’ information is an e-mail scam which in and of itself demonstrates Respondent’s bad faith registration and use of the disputed domain names. Respondent has sent out e-mails that purport to be from “Gmail” or “Gmail, Inc.” which direct recipients to a website seeking personal contact information. Respondent’s use of the disputed domain names in this manner amounts to phishing, and therefore bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). The Panel also finds bad faith registration and use under Policy ¶ 4(a)(iii) on this basis alone. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmailgifts.com>, <gmailfreeoffer.com>, <gmailfreeoffers.com>, <gmailreward.com>, <mygmailaward.com>, <mygmailawards.com>, <mygmailgift.com>, <mygmailgifts.com>, <mygmailreward.com>, and <mygmailrewards.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 11, 2012
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