Google Inc. v. Popov Vitaly
Claim Number: FA1612001710030
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States of America. Respondent is Popov Vitaly (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ɢoogle.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2016; the Forum received payment on December 29, 2016.
On January 9, 2017, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <ɢoogle.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2017 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@ɢoogle.com. Also on January 5, 2017, 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 January 24, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on January 30, 2017.
On February 03, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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 offers a wide range of Internet-related products and services, including Internet search and online advertising services. Complainant registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,140,793, registered Sept. 12, 2006), which demonstrates Complainant’s rights in its mark. Respondent’s <ɢoogle.com> is identical to the GOOGLE mark because it replaces the “G” with “ɢ” which is visually identical to Complainant’s mark, and the generic top-level domain (“gTLD”) “.com” is an irrelevant addition.
Respondent does not possess any rights or legitimate interests in <ɢoogle.com>. Respondent has not received any authorization or license from Complainant to register any iteration of the GOOGLE mark in a domain name. Further, Respondent has caused the domain name to resolve to a potentially dangerous website that may distribute malware to Internet users. See Compl., at Attached Annexes 10–11.
Respondent registered and used <ɢoogle.com> in bad faith. Respondent’s arrangement of an identical domain name to pose a threat to Internet users seeking complainant is a disruption to Complainant and its business, and Respondent likely commercially gains from such an arrangement pursuant to both Policy ¶¶ 4(b)(iii) and (iv). Further, this use constitutes nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii), as does Respondent’s actual/constructive knowledge of Complainant and its rights in the GOOGLE mark.
B. Respondent
Complainant has misrepresented Respondent’s use in this proceeding. Respondent has not arranged for the resolving website to display malware, scareware, or used the website for any nefarious purposes. Respondent provides, in its Annex 2, a website that purportedly shows Respondent’s domain name is not involved in what has been defined as “spam.” Complainant provides evidence of <oogle.com> resolving to <chestgold.com>, not Respondent’s <ɢoogle.com>.
Complainant is engaged in reverse domain name hijacking.
C. Additional Submission—Complainant
Complainant acknowledges that Respondent disputes the purported redirection to <chestgold.com> and <winerrorfrozen51174.in>. Complainant also acknowledges Respondent’s assertion that <oogle.com> redirects to <chestgold.com>, but notes that Respondent fails to mention that <ɢoogle.com> redirects first to <oogle.com>, and then to myriad other websites. See Compl., at Attached Annex 15.
Further, while Respondent argues that the website is not malicious, the site continues to be blocked by anti-virus software. See id.; see also Compl., at Attached Annex 16.
While Respondent disputes that it is a spammer, it is engaging in “referrer spam” which occurs when fake visits are sent to Google Analytics. See Complaint, at Attached Annex 12 for Internet media allegations of Respondent engaging in this type of spam. See also Compl., at Attached Annex 18 (Wikipedia screenshots re: “referrer spam”). In addition, Complainant’s Attached Annex 19 is another article containing an allegation that Respondent has engaged in similar activity through <lifehacĸer.com> (with Latin Small Letter Kra (“ĸ”)). Complainant also provides an article where Respondent purportedly went on record admitting to engaging in spam. See Compl., at Attached Annex 20 (“‘Money,’ [Vitaly] Popov wrote. ‘Traffic is money’”).
Preliminary Issue: Domain Name Characters
According to Complainant, the “ɢ” in <ɢoogle.com> represents Unicode character 0262 (“Latin Letter Small Capital G”) and falls within the category of domains known as “internationalized domain names” (IDNs). The domain name, as seen in the WHOIS of record (Compl., at Attached Annex 4), is translated in Punycode: <xn--oogle-wmc.com>. Panels have treated Punycode iterations of domain names in an identical manner with their IDN counterparts. See, e.g., Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010); Cable News Network, Inc. v. Guowei Hai Gui, FA1426475 (Forum Mar. 13, 2012); Watts Water Tech. Inc. v. Am. WATS Valve Group, FA1464841 (Forum Nov. 21, 2012). Therefore, the Panel agrees that proceeding to analyze the IDN <ɢoogle.com> (hereafter, the “Domain Name”) rather than its Punycode <xn--oogle-wmc.com> is proper as they are equivalent.
Preliminary Issue: Language of the Proceedings
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006‑0593). Factors which previous Panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Russian language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
The Panel notes that Complainant requests the English language as the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant contends that the Registrar Service Agreement is in English (see Compl., at Attached Annex 5), the resolving website displays English language (see Compl., at Attached Annexes 10–11), and Respondent has caused the domain name to redirect to English language sites (see Compl., at Attached Annex 13). The Panel also takes into consideration that Respondent has submitted an English language Response.
In view of the above, it is not foreseeable that Respondent will be prejudiced, should English be adopted as the language of the proceedings.
Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language.
After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Findings of Fact
Complainant offers a wide range of Internet-related products and services, including Internet search and online advertising services, as well as a service, named Google Analytics, that tracks and reports data about website traffic.
Complainant owns numerous trademark registrations for the GOOGLE mark in jurisdictions throughout the world, many dating back to as early as 1998. Complainant’s primary website is located at www.google.com, which according to different rankings is one of the top websites in the world for web traffic.
Respondent, Popov Vitaly, registered the <ɢoogle.com> domain name on March 23, 2016. The <ɢoogle.com> domain name is an internationalized domain name (“IDN”) with the PUNYCODE translation of [<xn--oogle-wmc.com>].
Complainant has provided evidences to show that the <ɢoogle.com> domain name redirects consumers to the website which is blocked by anti-virus software due to the presence of malware, and otherwise redirects Internet users to <oogle.com> and subsequently to other malicious sites. Some of the redirects were to apparent phishing schemes.
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 offers a wide range of Internet-related products and services, including Internet search and online advertising services. Complainant contends that it registered the GOOGLE mark in jurisdictions around the world (see Compl., at Attached Annex 9) that issued over ten years before the registration date of the Domain Name. These filings remain valid and in force. In light of these filings and Google’s substantial and exclusive use of the GOOGLE mark, Google owns protectable rights in the GOOGLE mark that predate the registration date of the Domain Name. See Google Inc. v. esin bilge y?lmazer/ N/A, FA1569271 (FORUM Aug. 16, 2014) (registrations in international jurisdictions sufficed to demonstrate prior rights; complainant need not demonstrate registration in the country where the respondent resides); Google, Inc. v. serap ozk, FA1562193 (FORUM July 14, 2014) (finding prior rights established in the GOOGLE mark through complainant’s holding of numerous trademark registrations internationally).
Further, where a valid registration exists, Respondent’s location does not matter. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Therefore, the Panel agrees that Complainant has supported its rights in the GOOGLE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ɢoogle.com> is identical to the GOOGLE mark because it replaces the “G” with “ɢ” which is visually identical to Complainant’s mark, and the gTLD “.com” is an irrelevant addition. The gTLD “.com” has been characterized as “[doing] nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.” Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007). Additionally, exchanging a letter in a mark for a Unicode character has failed in avoiding confusing similarity. See Microsoft Corp. v. Jason Harrington, FA1305319 (Forum Mar. 16, 2010) (finding that the replacement of the standard ASCII character “i” with an “ı,” a non-ASCII, Latin Extended A character 0131, in the domain name, <bıng.com>, failed to prevent confusing similarity with complainant’s mark, BING).
Therefore, the Panel finds that Respondent has created an identical or confusingly similar domain name <ɢoogle.com> and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
It is now well established that 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 Respondent does not possess any rights or legitimate interests in <ɢoogle.com>. First, Complainant notes that Respondent has not received any authorization or license from Complainant to register any iteration of the GOOGLE mark in a domain name, and that Respondent is not commonly known by <ɢoogle.com>. A respondent may not be found to be commonly known by a domain name where the WHOIS does not indicate as much, and where a complainant refutes any connection with such a respondent. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS lists “Vitaly Popov” as registrant. Accordingly, the Panel agrees that Respondent is not commonly known by <ɢoogle.com>.
Further, Complainant argues that Respondent has caused the domain name to resolve to a potentially dangerous website that may distribute malware to Internet users. See Compl., at Attached Annexes 10–11. Where the only use of a domain name seems to be for nefarious purposes, such evidence may speak to a lack of rights and legitimate interests. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The Panel agrees that Complainant has met its prima facie burden of demonstrating that Respondent’s website is blocked by anti-virus software due to the presence of malware (see Compl., at Attached Annex 15 (“Malicious website blocked”)), and otherwise redirects Internet users to <oogle.com> and subsequently to other malicious sites (id.). The use of the Domain Name for a website which apparently distributes malware cannot be said to constitute a bona fide offering of goods and services. See Dell Inc. v. Tawnya grilth c/o delpc.us, FA1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that respondent was not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the domain name where the disputed domain resolved to a site offering malware and malicious software).
The Panel also states that Respondent’s bald assertions that Complainant is a liar are not adequate in rebutting this evidence and therefore that Respondent has proffered no bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
In the Panel’s view the above is more than sufficient to enable Complainant to succeed under this element. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name as provided by the Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used <ɢoogle.com> in bad faith. Complainant contends that Respondent’s arrangement of an identical domain name to pose a threat to Internet users seeking Complainant is a disruption to Complainant and its business, and Respondent likely commercially gains from such an arrangement pursuant to both Policy ¶¶ 4(b)(iii) and (iv). Schemes to divert Internet users for profit have returned findings of bad faith under both prongs. See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (“Respondent’s first use of the disputed domain name to redirect Internet users…disrupts Complainant’s business because Internet users may be confused as to Complainant’s affiliation with the site and become potential customers lost for Complainant. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to an unrelated site demonstrate bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Disney Enters., Inc. v. Noel, FA0198805 (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 either to disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”)).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name is confusingly similar to Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Furthermore, Complainant has provided information that supports its contention that Respondent’s conduct online has been nefarious through screenshots of the resolving website which purportedly displays an attempt to download malware (see Compl., at Attached Annexes 10–11, 15), as well as recognition Respondent has received online for its actions in spamming online (see Compl., at Attached Annexes 12, 20). The fact some of the links appear to be malware or phishing sites is further evidence of bad faith, and, therefore, the Panel agrees that the weight of the evidence shows that Respondent’s actions are indeed suspect, and that findings of bad faith are warranted under Policy 4(b)(iii) and (iv).
Further, Complainant argues that Respondent’s use constitutes nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii), as does Respondent’s actual/constructive knowledge of Complainant and its rights in the GOOGLE mark. Malware has been considered as nonexclusive bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Given the identicality of the domain name, and Complainant’s fame, while constructive notice is not acknowledged under the Policy, Respondent’s actual knowledge may be imputed. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”); Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).
Accordingly, the Panel finds that the totality of the evidence suggests bad faith under a nonexclusive consideration of Policy 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of <ɢoogle.com>, of its rights to use the disputed domain name. Aside from a conclusory statement in the Response, Respondent makes no further contentions as to Complainant’s reverse domain name hijacking.
Complainant argues that it has indeed met its burden under the Policy, and that its efforts in this proceeding demonstrate that Complainant has brought this proceeding in good faith.
Since the Panel found that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel, therefore, finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Securian Financial Group, Inc. v. me s / enom, FA1595614 (FORUM Jan. 16, 2015) (denying request for reverse domain name hijacking where Complainant satisfied all elements of Policy ¶ 4(a)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ɢoogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: February 16, 2016
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