Google Inc. v. S S / Google International
Claim Number: FA1506001625742
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is S S / Google International (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleinternational.com>, registered with GoDaddy.com, LLC (sometimes referred to herein as the “Disputed Domain Name”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015.
On June 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googleinternational.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@googleinternational.com. Also on June 29, 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.
A timely Response was received and determined to be complete on July 20, 2015.
On July 27, 2015 a timely Additional Submission was received from Complainant.
On August 3, 2015 a timely Additional Submission was received from Respondent.
On July 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides a wide range of Internet-related products and services, including Internet search and online advertising services. It is headquartered in Mountain View, California and has offices throughout the world. It possess nine United States trademark registrations and numerous international trademark registrations for its mark “GOOGLE” (e.g., Reg. No. 2,884,502, registered Sept. 14, 2004 [all such registrations sometimes referred to herein as the “Complainant’s Mark”.]
Complainant has not authorized Respondent to register or use the Disputed Domain Name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant.
Whereas the WHOIS information for the Disputed Domain Name identifies Respondent’s organization as “Google International,” there is no evidence that Respondent was “commonly known” as Google International prior to its registration of the Disputed Domain Name.
Counsel for Complainant contacted Respondent a number of times throughout late 2014 and early 2015, advising Respondent of Google’s rights and asking Respondent to transfer the Disputed Domain Name to Complainant. Respondent refused to do so.
During one of these conversations the Responded informed the Complaint’s counsel that “many third parties are offering him good money in exchange of the domain” and invited Complainant to make an offer to purchase the Disputed Domain Name.
The Disputed Domain Name resolved to a blank placeholder webpage, and Respondent is making no active use of the Disputed Domain Name.
B. Respondent
Respondent has not used Complainant’s Mark or any name resembling Complainant’s mark. Further, there is no similarity or any basis for confusion between the names as used Complainant and Respondent.
In registering the Disputed Domain Name, Respondent complied with all the terms, conditions, and policies of GoDaddy, and as such it shall be considered that Respondent is having rights or legitimate interests in respect of the Disputed Domain Name. Moreover, Respondent is making a legitimate fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service Mark at issue.
Respondent respectfully denies that it has been collecting bids for the Disputed Domain Name. Respondent has never offered to sell the Disputed Domain Name to anyone, including Complainant.
Respondent Respectfully denies all of the allegations in relation to any circumstances indicating that Respondent has registered or acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant.
Further, Respondent has not registered the Disputed Domain Name in order to prevent the owner of the trademark from reflecting the Mark in a corresponding domain name.
Respondent has never acted or shown any intentions in respect of registering the domain name primarily for the purpose of disrupting the business of a competitor.
Respondent has never intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant has acted unlawfully with “coercion” and “undue influence” in threatening Respondent as well as respondent’s relatives over this matter of the Disputed Domain Name.
There are many other websites and mobile applications existing with domain names similar to the Disputed Domain Name and Complainant has never taken action against these other domain names.
The registrar of the disputed domain name, Go Daddy, offers for sale various domain names which are exactly similar to the Disputed Domain Name.
Respondent is not in currently using the Disputed Domain Name, and as such it cannot be using The Disputed Domain Name in “bad faith,” and Complainant’s allegations to the contrary are irrelevant and baseless.
Further, Respondent specifically denies all of the allegations of the Complaint regarding the Disputed Domain Name.
D. Complainant’s Additional Submission
Respondent’s responsive brief amounts to little more than a series of unsupported assertions, falsehoods and denials. Respondent offers no documentation to support his claims of legitimate interest or to counter Complainant’s evidence of bad faith use and registration.
Respondent has indeed used Complainant’s Mark. A review of WHOIS and Internet Archive Wayback Machine records (copies attached as exhibits to Complainant’s Additional Submission) proves that Respondent engaged in commercial activities under the Disputed Domain Name. Specifically, these records reveal that at least as late as March 22, 2014, Respondent owned the Disputed Domain Name and was using it in connection with a range of Internet related services, including online marketing, website development, mobile app development, and email marketing services, all offered under the Disputed Domain Name.
Respondent has indeed used the Disputed Domain Name for commercial gain, and in fields closely related to complainant’s business, as noted immediately above.
As detailed in the Complaint, Respondent is currently passively holding the Disputed Domain Name.
Respondent did indeed state to Complainant’s counsel that many third parties are offering him good money in exchange for the Disputed Domain Name and invited Complainant to make an offer to purchase the Disputed Domain Name. This is demonstrated by a summary of communications between Respondent and Complainant’s counsel as maintained by Complainant; a copy of this record is attached as an exhibit to Complainant’s complaint, and a declaration supporting this record given by the Complaint’s representative who engaged in these discussions with Respondent.
Respondent argues that he owns rights and legitimate interests in the disputed Domain Name because he registered the Disputed Domain Name and in doing so agreed to the registrar’s terms and conditions. Such a claim is unsupported by precedent. The mere registration of a domain name cannot establish rights or legitimate interests; if such were the case, all registrants would have such rights, thus rendering the Policy a nullity.
Respondent seeks to excuse his bad faith use and registration of the Disputed Domain Name by pointing to other domains owned by unrelated parties that also incorporate Complainant’s mark. This is incorrect, as Complainant aggressively and vigorously enforces its rights through domain name dispute proceedings. Moreover, arguments of acquiescence have no place in proceedings under the Policy.
The remaining assertions in the Response constitute nothing more than conclusory and unsupported claims and automatic and unsubstantiated disagreements with Complainant’s factually supported claims.
Finally, Respondent makes the unsavory allegation that Complainant has threatened Respondent and his relatives in an attempt to coerce him concerning the Disputed Domain Names. As with Respondent’s other assertions, this claim is not supported with any evidence. Thus, there is little for Complainant to respond to other than to say that it has neither engaged in nor authorized any harassment of Respondent concerning the Disputed Domain Name or any other matter.
E. Respondents Additional Submission
This dispute is a clear case of reverse domain name hijacking and malafide intention with respect to Respondent’s use of the Disputed Domain Name. Complainant’s Additional Submission amounts to more of illegitimate and unethical allegations. Also, Complainant fails to submit such evidences which proves the required “Bad Faith Use and Registration” element of the Policy, as any such mere reference to the Policy shall not, in any manner, suffice any of such contentions and allegations.
Respondent has always used the Disputed Domain Name in a manner that evidences bona fide intentions and an absence of bad faith with respect to use and registration. For purposes of the issue of bad faith, Complainant alleges that Respondent has willfully engaged in activities that are closely related to Complainant’s commercial offerings. Such is not the case. The commonality between the activities of Respondent and those of Complainant, to the extent that they may be common, such as online marketing, website development, mobile app development, and email marketing services, is mere coincidence, and Respondent is not engaged in any such acts willfully with respect to Complainant and its business operations. Further, Respondent’s activities in these regards do not adversely affect Complainant or its business operations.
Complainant also contends that Respondent was using the Disputed Domain Name in an attempt to “divert unsuspecting Internet” users seeking Complainant’s services to a website that offered competing services not sponsored by, affiliated with, or endorsed by Complainant for the purpose of disrupting complainant’s business. Such is not the case. Records from Alexa.com (an Amazon.com company) which provides various services including those of providing “audience demographics ” (attached as an exhibit to both Respondent’s Response and Respondent’s Additional Submission) shows no web traffic or substantial demography information of the Disputed Domain Name. As such, there is no actual use as required by the bad faith element of the Policy (paragraph 4(a)(iii)).
Complainant has consistently made the unsavory allegation that “Respondent stated that many third parties are offering him good money in exchange for the Domain Name and invited Complainant to make an offer to purchase the Domain Name.” Complainant has failed to provide evidence to support this allegation. Moreover, Respondent has never received such an offer from anyone.
Complainant is the owner of numerous trademark registrations issued by the United States Patent and Trademark Office and similar national registrars around the world for Complainant’s mark, GOOGLE, all of which were issued prior to the time Respondent registered the Disputed Domain Name.
Respondent registered the Disputed Domain Name, <googleinternational.com>.
Respondent used the Disputed Domain Name to resolve to a website that contained the following content, among other things:
“GI Services [click through headings]
- Call center services
- Lead generation data entry services website developing
- Mobile app developing
- Email marketing research and analysis
- Creative services
- Data/lead services
- Transcription services
- View all
- Contact
“Google international
Outsource your project or campaign and get access services and specialization. Save money and time, grow your business at the competitive edge. Your competitors are outsourcing to us to save time and money then and why aren’t you?
“Outsourcing to Google International with advantages:
-Save time..! And cost benefits
-Specialized services and access on it
-Load time frame to delivery, time zone advantages
-Operations up and down without hiring and training
-Increase customer satisfaction due to high quality and fast delivery
“We deliver our business honestly…!”
Respondent was not commonly known by “Google International” before it registered the Disputed Domain Name.
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.
Complainant has rights in Complainant’s mark for purposes of Policy by virtue of its various registration With the United States Patent and Trademark Office and similar agencies throughout the world. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Disputed Domain Name is confusingly similar to Complainant’s mark for purposes of the Policy. The Disputed Domain Name contains the entirety of Complainant’s mark, GOOGLE, and the addition of the generic term “international” within the Disputed Domain Name fails to adequately distinguish the Disputed Domain Name from Complainant’s Mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Further, the inclusion of the gTLD “.com” within the Disputed Domain Name is irrelevant for purposes of making the comparison with Complainant’s Mark. 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).
Complainant has established the first element of the Policy.
Under the second element of the Policy, 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.”).
Complainant asserts that it did not authorized Respondent to register or use the Disputed Domain Name, that Respondent is not affiliated with, associated with, or otherwise endorsed by Complainant, and that there is no evidence Respondent is commonly known by the Disputed Domain Name, despite that the WHOIS information suggests otherwise.
Respondent asserts that it does have rights and legitimate interests in respect to the Disputed Domain Name because in acquiring the Disputed Domain Name it complied with all the terms, conditions, and policies of the registrar, GoDaddy. Moreover, Respondent asserts that its use of the Disputed Domain Name is a fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Respondent’s compliance with the terms, conditions, and policies of GoDaddy is not relevant to an analysis under the Policy. The issue for this second element of the Policy concerns Respondent’s rights or legitimate interests in respect to the Disputed Domain Name, and these issues are not addressed during the process of registering a domain name; no registrar performs an inquiry into these issues as a condition for the issuance of a domain name registration.
Respondent did identify itself as “Google International” in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> Domain Name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the Respondent was ever ‘commonly known by’ the Disputed Domain Name prior to its registration of the Disputed Domain Name”).
Complainant has established the second element of the Policy.
Policy paragraph 4(b) sets forth four non-exclusive examples of behavior that constitutes “bad faith,” one of which is 4(b)(iv), which reads:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the instant matter Respondent has used the Disputed Domain Name to resolve to a website (the “Respondent’s Website”). This usage is evidenced by the Wayback record provided by Complainant as an exhibit to its Additional Submission. This website content included, among other things, the following:
“GI Services [click through headings]
- Call center services
- Lead generation data entry services website developing
- Mobile app developing
- Email marketing research and analysis
- Creative services
- Data/lead services
- Transcription services
- View all
- Contact
“Google international
Outsource your project or campaign and get access services and specialization. Save money and time, grow your business at the competitive edge. Your competitors are outsourcing to us to save time and money then and why aren’t you?
“Outsourcing to Google International with advantages:
-Save time..! And cost benefits
-Specialized services and access on it
-Load time frame to delivery, time zone advantages
-Operations up and down without hiring and training
-Increase customer satisfaction due to high quality and fast delivery
“We deliver our business honestly…!”
The above offering of services are clearly commercial in nature, and no evidence is presented that would suggest Respondent was not seeking commercial gain.
Clearly, Respondent was intentionally seeking to attract Internet users to Respondent’s Website, otherwise there is no point in having a website.
The critical question is whether Respondent was doing so by means of intentionally creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s Website. The Panel concludes that Respondent was doing so.
Complainant’s mark is fanciful. It is not possible for Respondent to have independently developed the Disputed Domain Name. Further, not only is Complainant’s mark famous and generally well known, Respondent works in the Internet space, and as such would be that much more likely (to a certainty) to be aware of Complainant’s mark. See Google Inc. v. Publica, FA 1294447 (Nat. Arb. Forum Jan 11, 2010)(“the fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the Registrant created the domain name independently”).
The above noted service offerings mentioned on Respondent’s Website may not all be directly competitive with services offered by Complainant, but some are, and all of them taken together are sufficiently similar to the services offered by Complainant such that a reasonable Internet user seeking such services could easily find his or her way to Respondent’s website when he or she was actually looking for Complainants website. Even if such an Internet user understood from Respondent’s website that Respondent was not Complainant itself, the natural inference on the part of an Internet user would be of sponsorship or affiliation. Under these circumstances, an inference that Respondent intended this result is justified, and the panel so finds.
Additionally, the panel finds that Respondent’s registration and use of the Disputed Domain Name is in bad faith because the panel cannot conceive of a potential use of the Disputed Domain Name by Respondent that would not be illegitimate and as such would not be in bad faith. See 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, 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.”).
Respondent asserts that a finding of bad faith is not appropriate under the circumstances of this matter because Respondent is not currently using the Disputed Domain Name, and Respondent provides evidence to this effect in both its Response and its Additional Submission. However, this is not a defense when Respondent has actually used the mark in the past and in bad faith; if this were a viable argument, every respondent could avoid a finding of bad faith by simply stopping its usage of the involved domain name upon receiving a challenge. Further, in many situations the mere nonuse of a disputed domain name can itself be taken as evidence of bad faith. See one West Bank, FSB, FA 1420407 (“The record demonstrates that Respondent is currently making no active use of the Domain Name ….This also is evidence of bad faith registration and use.”). See also 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).
Complainant asserts Respondent’s invitation for Complainant to make an offer to buy the Disputed Domain Name is evidence of bad faith under Policy paragraph 4(b)(i). Complainant provides evidence that such a statement was made by Respondent. On the other hand, Respondent denies he made such a statement. Setting aside this factual dispute, some panels have found that such a statement is evidence of bad faith in and by itself. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)(finding that the attempted sale of a domain name is evidence of bad faith). However, this Panel believes such a statement is not ipso facto evidence of bad faith. Rather, sometimes such a statement does not so much show evidence of original intent, but rather shows a not altogether unnatural response (if ill considered) on the part of a layman to a demand that a domain name be transferred. The panel finds that if such a statement was made in this instance, it was likely in this latter category.
Respondent asserts that its use of the Disputed Domain Name is not in bad faith because many other websites and mobile applications exist with similar domain names, and these have not been challenged by Complainant. The Panel disagrees. The issue of acquiescence is not relevant to an analysis under the Policy. See Disney Enterprises Inc. V. Jared Meyers d/b/a Online Holdings, FA 0697818 Nat. Arb. Forum June 26, 2006)(“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of complainants DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Respondent asserts that its use of the Disputed Domain Name is not in bad faith because similar domain names are readily available for registration. The Panel disagrees. The registration of a domain name does not confer rights; rather, the registration of a domain is always subject to proceedings under the Policy.
Complainant has established the third element of the Policy.
Reverse Domain Name Hijacking
Respondent raises the issue of reverse domain name hijacking in its Additional Submission. The Panel disagrees given the Panel’s conclusion that Complainant has established all three elements of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleinternational.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: August 4, 2015
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