Google Inc. v. Sunil K, iSupport Solution
Claim Number: FA1502001605032
Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Sunil K, iSupport Solution (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmailtechsupport.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2015; the Forum received payment on February 16, 2015.
On February 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmailtechsupport.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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@gmailtechsupport.us. Also on February 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the GMAIL trademark in connection with the provision of email and electronic messaging services.
Complainant has registered the GMAIL trademark with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 3,150,462, registered April 2, 2004).
Respondent registered the <gmailtechsupport.us> domain name on May 7, 2014.
The <gmailtechsupport.us> domain name is confusingly similar to Complainant’s GMAIL mark.
Respondent has not been commonly known by the <gmailtechsupport.us> domain name or any variation of the GMAIL mark.
Complainant has not given Respondent any license or other authorization to use the GMAIL mark.
Respondent is not using the <gmailtechsupport.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent uses the website resolving from the domain name to attempt to gain access to Internet users’ confidential Gmail passwords, and, presumably, to sell them for profit.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the GMAIL mark when it registered the disputed domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a mark holder’s 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 for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that because a trademark holder had registered its mark with one or more national trademark authorities, “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here India). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a complainant has registered its trademark in the country of a respondent’s residence).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <gmailtechsupport.us> domain name is confusingly similar to complainant’s GMAIL trademark. The domain name contains the mark in its entirety, merely adding the generic terms “tech” and “support,” which relate to an aspect of Complainant’s business, and the country code top-level domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated Complainant’s entire mark and merely added two generic terms to it).
See also Chanel, Inc. v. Cologne-Zone, D2000-1809 (WIPO Feb. 22, 2001):
… the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, … is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.
As to the addition of the ccTLD “.us” to Complainant’s trademark in creating the <gmailtechsupport.us> domain name as affecting a Policy ¶4(a)(i) analysis, see Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (finding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to …[a Policy ¶ 4(a)(i)]… analysis….”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the <gmailtechsupport.us> domain name or any variation of the GMAIL mark, and that Complainant has not given Respondent any license or other authorization to use the GMAIL mark.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Sunil K, iSupport Solution,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the website resolving from the <gmailtechsupport.us> domain name to attempt to gain Internet users’ confidential Gmail passwords (a process called “phishing”), and, presumably to sell them for profit. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Homer TLC, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1410944 (Nat. Arb. Forum Nov. 21, 2011), in which a panel found that:
Respondent’s disputed domain name resolves to a website requesting personal information from the Internet users arriving there, which the Panel finds to be a classic ‘phishing’ scheme. Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
See also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010):
The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <gmailtechsupport.us> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the GMAIL trademark when Respondent registered the <gmailtechsupport.us> domain name. This too is proof of Respondent’s bad faith in the registration of the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a complainant's rights in the UNIVISION mark when it registered a disputed domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gmailtechsupport.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 19, 2015
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