national arbitration forum

 

DECISION

 

Google Inc. v. Privacy-Protect.cn / Henry Nguyen Gong

Claim Number: FA1301001480881

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA.  Respondent is Privacy-Protect.cn / Henry Nguyen Gong (“Respondent”), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googlefiles1.com>, registered with BIZCN.COM, INC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 18, 2013.

 

On January 18, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <googlefiles1.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name.  BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, INC. 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 January 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2013 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@googlefiles1.com.  Also on January 18, 2013, 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 February 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Google is a Delaware corporation located in Mountain View, California.

The GOOGLE name and company were created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin.  Since that time, the GOOGLE search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world.  Google’s primary website is located at www.google.com, and Google owns and operates hundreds of additional GOOGLE-formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE Mark.

The GOOGLE search engine maintains one of the world’s largest collections of searchable documents.  The GOOGLE search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content in many different languages.

The GOOGLE Mark has been found to be one of the top five Most Valuable Global Brands since 2001, with BrandFinance Global 500 ranking Google’s mark as the world’s most valuable brand in 2011, valued at $44.3 billion.  In 2002, 2003, 2005 and 2006, the GOOGLE Mark was recognized as the world’s #1 brand by Brandchannel.  Google’s website also has been recognized as one of the most popular destinations on the Internet since well before the registration of the googlefiles1.com domain name by the Respondent on February 16, 2012.  comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004.  According to comScore Media Metrix, Google is the # 1 Web property, with at least 581 million unique visitors/month.  According to Nielsen Netratings, Google is the #1 search engine in Argentina, Australia, Belgium, Brazil, Canada, Denmark, France, Germany, India, Italy, Mexico, Spain, Sweden, Switzerland, the U.K., and the U.S.  Moreover, Alexa, a Web traffic ranking company, lists Google as the top website for many countries, including currently being the # 1 website for traffic in the world. 

Google has consistently been honored for its technology and its services, and has received numerous industry awards. 

The GOOGLE Mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services.  The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google.  As a result, the GOOGLE Mark and name symbolize the substantial goodwill associated with Google.  Due to widespread and substantial international use, the GOOGLE Mark and name have become famous. 

Google owns numerous trademark registrations for the GOOGLE Mark in jurisdictions throughout the world, many dating back to as early as 1998.  Google’s registrations include a registration, issued September 12, 2006, for the mark GOOGLE in connection with its distinctive blue, red, yellow and green color scheme, which has been in use in connection with the GOOGLE Mark since at least as early as 1997.    Each such trademark registration remains valid and in full force and effect. 

 

B.      Respondent and the Domain Name

According to WHOIS records, the Respondent is Privacy-Protect.cn / Henry Nguyen Gong, located in Nimes Languedoc-Roussillon, France. 

As shown in the attached evidence, Respondent registered the Domain Name on February 16, 2012, long after Google acquired protectable rights in the GOOGLE Mark. 

The Domain Name currently resolves to a website in the Russian language that has a design and layout that substantially imitates the design and layout of a Google search results page.  For example, the website associated with the Domain Name displays a mark that imitates the Google Mark and distinctive color scheme, a navigation bar with links to search result pages for “Movies”, “Program”, “Music”, “Books”, “TV shows”, “Game”, “Soaps” and “18+”, the use of a similar font and the presentation of search results in blue.  In addition, the website associated with the Domain Name appears to provide search engine services, specifically for finding downloadable files, including potentially pirated content, over the Internet.  The website purports to offer “full access” and to provide the ability to download files to users who have provided their telephone number in exchange for an activation code and subscription to the website’s service.  According to the footer of the website, “[s]ubscription is available to subscribers of MTS”, and an Internet search reveals that MTS is the largest mobile phone service provider in Russia. 

An Internet search also reveals a number of complaints by consumers, who allege that they have attempted to register for the service offered through the googlefiles1.com website, that, after they did so, MTS made an unauthorized debit from their account, and that the consumer, in return, received a message saying that the file (s)he attempted to download is “missing”.  Further, a review of such complaints shows that, as a result of the unauthorized use of the GOOGLE Mark in the Domain Name and its associated website, Internet users mistakenly have been misled to believe that the googlefiles1.com website is owned, associated with and/or endorsed by Google, when, in fact, it is not.

 

Legal Grounds

This Complaint is based on the following legal grounds.

 

A.      Likelihood of Confusion –Rule 3(b)(ix)(1); Policy ¶4(a)(i)

Google has used the GOOGLE Mark continuously, and that mark became famous since well prior to February 16, 2012, the registration date of the googlefiles1.com domain name.  In addition, Google owns trademark registrations for the GOOGLE Mark, including in the U.S., France, Russia and China, that were issued (and date back to filing dates) well-prior to the registration date of the Domain Name.  Each trademark registration remains valid and in full force.  Thus, Google clearly owns rights in the GOOGLE Mark that predate the registration of the Domain Name.  See, e.g., Google Inc. v. Africahostway Co. Ltd., FA420456 (Nat. Arb. Forum June 2, 2012) (finding that Google demonstrated rights in the GOOGLE Mark, pursuant to Policy ¶4(a)(i), by evidence of its multiple trademark registrations for GOOGLE, which predated the registration date for the disputed domain name); see also Google, Inc. v. DktBot.org, FA286993 (Nat. Arb. Forum Aug. 4, 2004) (holding that complainant had established rights in the GOOGLE Mark through its holding of numerous trademark registrations around the world).

A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.”  PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).  Here, the Domain Name incorporates the famous GOOGLE Mark in its entirety.

In registering the domain name googlefiles1.com, Respondent has merely added the term “files” and the number “1.”  Each term is merely a generic addition to Google’s famous mark.  “Files” is generic for the digital media and other files purportedly available for download at the website to which the Domain Name resolves, and the number “1” is non-distinctive in this context.  It is well-settled that the mere addition of generic terms and numbers to a complainant’s mark is not sufficient to create a distinctive domain name and to overcome a finding of confusing similarity, pursuant to Policy ¶4(a)(i).  See Google Inc. v. SP, FA395068 (Nat Arb. Forum July 27, 2011) (finding respondent’s googleloadfiles.com domain name confusingly similar to the GOOGLE mark because the domain name simply added the generic terms “load” and “files”); Univision Commc’ns Inc. v. Forthright Media / Michael Piotrowski, FA470373 (Nat. Arb. Forum Jan. 2, 2013) (“The addition of generic numbers does not differentiate Respondent’s disputed domain name [univision19.com] from Complainant’s mark [UNIVISION] under Policy ¶4(a)(i).”).

 Moreover, the addition of the generic top-level domain “.com”, “does nothing to relieve the confusing similarity [of the Domain Name] under Policy ¶4(a)(i), as a top-level domain is a requirement for all domain names.”  Register.com, Inc. v. Skander c/o Web Registration Service Dot Liban, FA029513 (Nat. Arb. Forum Aug. 22, 2007).

As such, the Domain Name is confusingly similar to the GOOGLE Mark.

 

B.  No Rights or Legitimate Interests—Rule 3(b)(ix)(2); Policy ¶4(a)(ii).

As Panels have noted in evaluating infringing GOOGLE-formative domains, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.”  Google Inc. v. Mikel M Frieje, FA102609 (Nat. Arb. Forum Jan. 11, 2002). 

Complainant has not authorized Respondent to register or use the Domain Name.  In addition, neither Respondent nor MTS or the services allegedly offered through the googlefiles1.com website are affiliated with, associated with and/or otherwise endorsed by Google.  Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Name.  See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA076561 (Nat. Arb. Forum Oct. 26, 2007).

On information and belief, Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark.  Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the GOOGLE Mark as Respondent’s name or nickname.  A registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name.  See Popular Enterprises, LLC v. Sung-a Jang, FA811921 (Nat. Arb. Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”). 

Respondent uses the Domain Name to resolve to a website that falsely represents to be affiliated with, associated with and/or otherwise endorsed by Google.  The website to which the Domain Name resolves uses a mark that mimics the Google Mark, including its distinctive color scheme, and has a design and layout that substantially imitates the design and layout of a Google search results page.  Moreover, similar to the services offered by Google, the website associated with the Domain Name purports to offer search engine services for locating downloadable content from the Internet.  By using the Domain Name in this manner, Respondent clearly seeks to capitalize on the confusing similarity of the Domain Name and the substantial goodwill established in the GOOGLE Mark to divert consumers to the googlefiles1.com website where competing services are offered.  Offering competing services under a complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶4(c)(iii).  See, e.g., AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937 (October 13, 2000) (“Although Respondent does offer search engine services at those sites, the offering of services is not ‘bona fide’ because, as discussed below, Respondent is using the domain names in bad faith to divert users to its own search engine through confusion.”).

In addition, by using the Domain Name to resolve to a website that imitates the general look and feel of Complainant’s Google website, Respondent is attempting to pass itself off as Google online, which also is evidence that Respondent lacks rights and legitimate interests in the Domain Name.  See Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

Further, according to consumer complaints on the Internet, it appears that the website associated with the Domain Name is involved in a scheme with MTS, in which MTS has made allegedly unauthorized withdrawals from consumers’ accounts, once those consumers have registered through the googlefiles1.com website.  According to the same complaints, after consumers have completed the registration process, they are then advised that the file they sought to download from the googlefiles1.com website is “missing”.  Respondent’s use of the Domain Name in connection with such a scheme clearly is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name.  See, e.g., Vivendi Universal Games v. Ballard, FA146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that the “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its [respondent’s] illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.”).

Thus, Respondent lacks any rights or legitimate interest in the Domain Name.

C.  Bad Faith—Rule 3(b)(ix)(3); Policy ¶4(a)(iii).

The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name in bad faith.  The fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Name, make it extremely unlikely that Respondent created the Domain Name independently.  See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA112627 (Nat. Arb. Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).  The numerous references to Google and the use of Google’s distinctive color scheme on Respondent’s website proves the subject domain name is no coincidence, but rather a bold attempt to trade on the goodwill established by Complainant in the GOOGLE Mark.

Moreover, even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith.  Google v. Abercrombie 1, FA101579 (Nat. Arb. Forum Dec. 10, 2001) (“Because of the famous and distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name googld.com].”).

Respondent uses the Domain Name to compete with Complainant by offering internet search engine services at a website that is designed to mimic Complainant’s actual website.  Respondent’s use of the Domain Name in this manner is disruptive to Complainant’s business and is evidence that Respondent has registered and is using the Domain Name in bad faith, under to Policy ¶4(b)(iii).  See, e.g., Google Inc. v. SP, FA395068 (finding that respondent’s use of the dispute domain name to compete with complainant and disrupt its business by offering similar search engine services at a website that mimics complainant’s website is evidence of bad faith registration and use of the domain name).

Further, by using the Domain Name in connection with a website that substantially imitates the design and layout of Complainant’s actual website, it is clear that Respondent has intentionally attempted to attract Internet users to the googlefiles1.com website by creating a likelihood of confusion regarding the origin or source of that website.  Presumably, Respondent has attempted to create such confusion to profit from the goodwill established in the GOOGLE Mark.  Respondent’s actions support a finding of bad faith registration and use under Policy ¶4(b)(iv).  See Yahoo! Inc. v. Web Master, FA127717 (Nat Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent…has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark…as proscribed in Policy ¶4(b)(iv).”).

According to online complaints (see Annex 10), Respondent also has allegedly used the Domain Name in connection with a scheme that has allowed MTS to make unauthorized withdrawals from consumers’ accounts after they have registered through the googlefiles1.com website.  Respondent’s use of the Domain Name for allegedly fraudulent purposes is further evidence of bad faith registration and use of the Domain Name under Policy ¶4(b).  See, e.g., “Dr. Martens” Int’l Trading GmbH v. Jordan, FA461350 (Nat. Arb. Forum Oct. 17, 2012) (finding bad faith registration and use of the disputed domain name where it was used for phishing sites in order to defraud customers, who placed orders on the websites and whose credit cards were charged, but who never received the merchandise).

Given Respondent’s registration of a domain name that consists almost entirely of Complainant’s famous GOOGLE Mark, it is impossible to conceive of any potential legitimate use of the Domain Name.  As such, the Domain Name is being used in bad faith.  See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark . . . Respondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”).

Where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.”  Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). 

Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an cancelling or transferring a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant owns numerous trademark registrations in the GOOGLE mark around the world, including registrations with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,806,075 registered Jan. 20, 2004) and the NIIP (Reg. No. 06 3 469 540 registered on Dec. 14, 2006).  Complainant’s registration with multiple trademark agencies is sufficient evidence of Complainant’s rights.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”).  The Panel finds Complainant has rights in the mark under Policy ¶4(a)(i).

 

Complainant argues Respondent has merely added the term “files” and the number “1” to Complainant’s GOOGLE mark.  Complainant claims both of these additions are generic: “files” merely descriptive for digital media and other files purportedly downloadable from the disputed domain name, and “1” being a non-distinctive addition.  Frankly, this Panel would be skeptical of Complainant’s claim of “confusing similarity” under Policy ¶4(a)(i) in the absence of (i) demonstrated actual confusion and (ii) copying Complainant’s logo.  In the face of this clear evidence, the Panel must find there is a confusing similarity between Complainant’s mark and the disputed domain name.

 

Complainant claims the addition of the gTLD “.com” does nothing to clear up the confusing similarity of the <googlefiles1.com> domain name.  The addition of a gTLD is irrelevant under the Policy.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).  Under the URL syntax, each domain name must have a TLD (whether a gTLD or a ccTLD).  Since most marks do not contain such syntax elements, requiring them to find confusing slimialrity would effectively evisterate the UDRP, which this Panel is not preapred to do.  Under the facts as presented, this Panel finds the <googlefiles1.com> domain name is confusingly similar to the GOOGLE mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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.”).

 

Complainant claims Respondent is not commonly known by the disputed domain name.  This seems to be clear enough because the WHOIS information makes no mention of the <googlefiles1.com> in domain name registration.  The WHOIS information lists “Privacy-Protect.cn / Henry Nguyen Gong” as the registrant.  Based upon the lack evidence connecting Respondent to the <googlefiles1.com> domain name, the Panel concludes Respondent is not commonly known by the domain name under Policy ¶4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Complainant claims it has not authorized or otherwise permitted Respondent to use the GOOGLE mark in any manner.  Respondent has done nothing to refute this claim.

 

Complainant claims Respondent is using the <googlefiles1.com> domain name to offer services that compete directly with Complainant.  The domain name resolves to a website that features a search engine purporting to locate downloadable content from the Internet.  Complainant claims Respondent has designed its website to pass itself off as Complainant in the eyes of Internet users (and has provided screenshots which support this claim, as well as on-line blog discussions to that effect).  Based upon this evidence, it seems clear the disputed domain name resolves to a website that mimics both the GOOGLE mark, as well as distinctive aspects of Complainant’s website, and purports to offer downloads to Internet users.  Complainant has produced evidence suggesting Respondent is working with an organization known as MTS to make unauthorized withdrawals from the accounts of Internet users who use the domain name (which are somehow tied to cell phones in Russia).  Previous panels have concluded a respondent shows neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, when the domain name is used to offer competing services or in an attempt by respondent to pass itself off as complainant.  See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).  This Panel agrees and finds Respondent’s use of the disputed domain name does not amount to either a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.

 

Complainant claims Respondent is using the <googlefiles1.com> domain name in a scheme involving an entity known as “MTS” to acquire Internet user’s personal and financial information.  Respondent supplies this information to MTS so that MTS may make unauthorized withdrawals from the users’ financial accounts (in short, Phishing).  Complainant claims Internet users are asked to provide this information to receive their download(s).  When this information is provided, the Internet user is promptly informed the content they seek is missing.  Previous panels have held soliciting personal or financial information for no reason other than to exploit Internet users amounts to phishing—evidence a respondent lacks rights and legitimate interests in the domain name.  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).  This Panel agrees and finds Respondent’s phishing activities are further grounds to find neither a Policy ¶4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use are being made in conjunction with the disputed domain name.

 

Finally, Respondent registered the disputed domain name using a WHOIS privacy service.  This Panel has repeatedly held a respondent cannot acquire rights in a commercial context when a disputed domain name is registered using a WHOIS privacy service.  The nominee (the registrant or naked trustee) isn’t really using the domain name.  The undisclosed beneficiary isn’t disclosing it owns the domain name so it doesn’t acquire any rights.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent has registered and is using the domain name to disrupt Complainant’s business.  Complainant notes the domain name offers Internet search engine services designed to mimic Complainant’s services.  The <googlefiles1.com> domain name resolves to a website bearing a close resemblance to some of Complainant’s GOOGLE websites.  Previous panels have held the use of a disputed domain name to resolve to a website in close competition with a complainant’s business illustrates a bad faith use and registration.  See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).  This Panel agrees and finds Respondent has competed with and disrupted Complainant’s business in bad faith under Policy ¶4(b)(iii).

 

Complainant argues Respondent is attracting Internet users to the <googlefiles1.com> domain name by confusing them into associating the domain name with Complainant’s business.  Complainant claims Respondent is using the domain name in conjunction with the MTS entity in order to make unauthorized withdrawals from users’ financial accounts (apparently accounts used in connections with cell phones) for commercial gain.  The disputed domain name resolves to a website which tries to mimic the content found at Complainant’s GOOGLE websites.  Internet users have expressed dissatisfaction with the fact Respondent (or MTS) has billed them for services they never received.  Respondent’s efforts to make the confusingly similar domain name’s content appear to be similar to the content of Complainant’s websites illustrates a bad faith attempt to confuse Internet users into believing Complainant is the source or sponsor of the content on the <googlefiles1.com> domain name.  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).  The Panel finds Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv).

 

Complainant concludes by arguing Respondent had actual knowledge of Complainant’s rights in the mark.  Complainant points out there are numerous references to GOOGLE marks and Complainant’s business on web site appearing at the <googlefiles1.com> domain name.  In fact, Complainant’s mark is copied.  Under such circumstances, it appears obvious Respondent knew about Complainant’s mark, which 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).

 

Finally, using a WHOIS privacy registration service in a commercial context raises the rebuttable presumption of bad faith registration and use.  Respondent has done nothing to rebut this presumption.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <googlefiles1.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, February 25, 2013

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page