Google LLC v. Thierry georges anthoine Aillaud / nicolas bastos / marianne waszak / mickael lenglais / jean pierre beurton / edouard pierre
Claim Number: FA1808001801351
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Thierry georges anthoine Aillaud / nicolas bastos / marianne waszak / mickael lenglais / jean pierre beurton / edouard pierre (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adwords-financial.com>, <adwords-accounting.com>, and <adwordsbilling.com>, registered with Ovh Sas; <billingadwords.com> and <adwords-billing.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com; and <adwordfinancial.com>, registered with Namecheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2018; the Forum received payment on August 14, 2018.
On August 14, 2018, Namecheap, Inc. confirmed by e-mail to the Forum that the <adwordfinancial.com> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. On August 15, 2018, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <billingadwords.com> and <adwords-billing.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. On November 6, 2018, Ovh Sas confirmed by e-mail to the Forum that the <adwords-financial.com>, <adwords-accounting.com>, and <adwordsbilling.com> domain names are registered with Ovh Sas and that Respondent is the current registrant of the names. Namecheap, Inc., Ovh Sas, and Pdr Ltd. D/B/A Publicdomainregistry.Com have verified that Respondent is bound by the Namecheap, Inc., Ovh Sas, and Pdr Ltd. D/B/A Publicdomainregistry.Com registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2018 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@adwords-financial.com, postmaster@billingadwords.com, postmaster@adwords-accounting.com, postmaster@adwords-billing.com, postmaster@adwordfinancial.com, and postmaster@adwordsbilling.com. Also on November 13, 2018, 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 November 28, 2018.
On December 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that <adwords-financial.com>, <adwords-accounting.com>, and <adwordsbilling.com> domain names were registered with OVS, SAS registrar, the <adwordfinancial.com> domain name was registered with NameCheap, and the <billingadwords.com> and <adwords-billing.com> domain names were registered with PDR Ltd. d/b/a PublicDomainRegistry.com. Complainant argues all of the disputed domain names were registered within six (6) months of each other, used a common email provider, shared a common IP address, and were being used for the same email phishing scheme. See Compl. Annexes 9, 10, and 11. Finally, all of the disputed domain names utilize a highly similar format, using Complainant’s ADWORDS mark immediately preceded by or following one of these terms: billing, financial, or accounting (sometimes with the addition of a hyphen).
Having regard to all of those matters the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore proceed in its present form.
Preliminary Issue #2 Supported Language Request
Complainant requests that the language of this administrative proceeding be in the English language pursuant to UDRP Rule 11(a). Complainant submits that it makes this request in light of the French language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. 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 French 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). Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). The Panel has carefully reviewed all of these matters.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the 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 the English language.
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, uses the ADWORDS mark in connection with its online advertising service. Complainant has rights in the ADWORDS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,794,616, registered Dec. 16, 2003). See Compl. Annex 8. The <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names are confusingly similar to Complainant’s mark because Respondent wholly incorporates the ADWORDS mark in each domain name (while deleting one letter from the mark in the <adwordfinancial.com> domain name), adds a generic term (“financial,” “billing,” or “accounting”), and adds a “.com” generic top-level domain (“gTLD”). Additionally, Respondent adds a hyphen to the <adwords-financial.com>, <adwords-accounting.com>, and <adwords-billing.com> domain names.
Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names for email accounts to pass off as Complainant in furtherance of a phishing scheme. Further, Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names, and uses the <adwordfinancial.com> domain name to host pay-per-click links.
Respondent registered and uses the disputed domain names in bad faith. First, Respondent engages in a pattern of bad faith registration based on its ownership of six domain names in the instant proceeding. Second, Respondent passes off as Complainant in furtherance of a phishing scheme. Third, Respondent attempts to attract users for commercial gain by hosting pay-per-click advertising links at the <adwordfinancial.com> domain name’s resolving webpage. Fourth, Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the ADWORDS mark prior to registering the disputed domain names.
B. Respondent
Respondent does not use the domain names, and the domain names either do not exist or have expired.
1. Complainant is a prominent United States company that offers a wide range of Internet-related products and services.
2. Complainant has established its rights in the ADWORDS trademark by registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,794,616, registered Dec. 16, 2003).
3. Respondent registered the disputed domain names on the following dates:
|
Domain Name |
Registration Date |
|
<adwords-financial.com> |
August 9, 2017 |
|
<billingadwords.com> |
September 15, 2017 |
|
<adwords-accounting.com> |
September 11, 2017 |
|
<adwords-billing.com> |
November 14, 2017 |
|
<adwordfinancial.com> |
March 12, 2018 |
|
<adwordsbilling.com> |
March 16, 2018 |
4. Respondent uses the disputed domain names for email accounts to pass itself off as Complainant in furtherance of a phishing scheme. Further, Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names and uses the <adwordfinancial.com> domain name to host pay-per-click links.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the ADWORDS mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the ADWORDS mark (e.g., Reg. No. 2,794,616, registered Dec. 16, 2003). See Compl. Annex 8. Therefore, the Panel concludes that Complainant has rights in the ADWORDS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ADWORDS mark. Complainant submits that the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names are confusingly similar to Complainant’s mark because Respondent has wholly incorporated the ADWORDS mark in each domain name before adding a generic term and a gTLD, as well as deleting a letter and/or adding a hyphen. Such changes are not typically sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Here, Respondent incorporates the ADWORDS mark in its entirety in each domain name, while deleting one letter “s” from the mark in the <adwordfinancial.com> domain name. Respondent also adds a generic term (“financial,” “billing,” or “accounting”) and a “.com” gTLD to each domain. Additionally, Respondent adds a hyphen to the <adwords-financial.com>, <adwords-accounting.com>, and <adwords-billing.com> domain names. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ADWORDS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADWORDS trademark and to use it in its domain names, adding one of the generic words “financial”, “billing” and “accounting” that do not negate the confusing similarity with Complainant’s trademark and deleting one letter “s” from the mark in the <adwordfinancial.com> domain name;
(b) Respondent registered the respective disputed domain names on the following dates:
|
Domain Name |
Registration Date |
|
<adwords-financial.com> |
August 9, 2017 |
|
<billingadwords.com> |
September 15, 2017 |
|
<adwords-accounting.com> |
September 11, 2017 |
|
<adwords-billing.com> |
November 14, 2017 |
|
<adwordfinancial.com> |
March 12, 2018 |
|
<adwordsbilling.com> |
March 16, 2018 |
(c) Respondent uses the disputed domain names for email accounts to pass itself off as Complainant in furtherance of a phishing scheme. Further, Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names, and uses the <adwordfinancial.com> domain names to host pay-per-click links;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>,<adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names because Respondent is not authorized or permitted to use Complainant’s ADWORDS mark and is not commonly known by the disputed domain names. Where a substantive response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies Respondent as “Thierry georges anthoine Aillaud / nicolas bastos / marianne waszak / mickael lenglais / jean pierre beurton / edouard pierre,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain names. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use because Respondent uses the domain names to pass itself off as Complainant. Use of a disputed domain name to pass off as a complainant may not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of representative emails allegedly sent from email addresses associated with the disputed domains, in which the sender identifies itself as “Google Adwords Team.” See Compl. Annex 9. However, the Panel also notes that one of the emails was sent from an address associated with a domain name that is no longer a part of this proceeding. See id., see also Amend. Compl. Annex 12. Having regard to the totality of the evidence, the Panel concludes that Respondent uses the domain names to pass itself off as Complainant, and thus fails to use the disputed domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Moreover, Complainant argues that Respondent uses email addresses associated with the disputed domains to operate a phishing scheme. Use of a disputed domain name in connection with a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant submits that Respondent attempts to defraud Complainant’s customers via the emails described in the previous paragraph. See Compl. Annex 9. Therefore, the Panel concludes that the Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(h) Complainant argues that Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names. Inactive holding of a disputed domain name may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See EMVCo, LLC c/o Visa Holdings v. Domain Administrator/ China Capital Investment Limited, FA1705001732580 (Forum June 26, 2017) (finding that the disputed domain names resolved to “webpages that recite only the words: ‘Coming Soon’” and therefore holding that “[i]n the circumstances here obtaining, this use of the domain names 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) so as to confirm in Respondent rights to or legitimate interests in the domain names as described in those provisions.”). Here, Complainant submits that the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, and <adwords-billing.com> domain names do not resolve to active websites, but does not provide evidence for this contention. Complainant provides a printout of the resolving webpage for the <adwordsbilling.com> domain name, which displays a message that the site is under construction. See Amend. Compl. Annex 13. As the Panel finds Complainant’s contentions sufficient, it concludes that Respondent fails to use the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(i) Complainant submits that Respondent uses the <adwordfinancial.com> domain name to host pay-per-click advertising links. Use of a disputed domain to host pay-per-click links may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a printout of the <adwordfinancial.com> domain name’s resolving webpage, which features a list of links that Complainant submits direct users to third parties. See Amend. Compl. Annex 13. Therefore, the Panel concludes that Respondent fails to use the <adwordfinancial.com> domain name for any bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
In its Response, Respondent submits that it does not use the domain names, and that the domain names either do not exist or have expired.
Having regard to the totality of the evidence, the Panel rejects these submissions. Accordingly, Respondent has not rebutted the prima facie case against it. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent engages in a pattern of bad faith registration based on its ownership of six domain names in the instant proceeding. The registration of multiple domain names, all subject of the current proceeding, may evince bad faith under Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). There are six domain names in this proceeding, all of which contain Complainant’s ADWORDS mark. Therefore, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent uses the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names to pass itself off as Complainant in furtherance of a phishing scheme. Use of a disputed domain to pass off as a complainant in connection with phishing may evince bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides screenshots of emails to substantiate this contention. See Compl. Annex 9. Therefore, the Panel concludes that Respondent registered and uses the disputed domain names listed above in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent hosts pay-per-click advertising links at the <adwordfinancial.com> domain name’s resolving webpage. Use of a disputed domain name to host pay-per-click links may evince bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel notes that Complainant provides a printout of the <adwordfinancial.com> domain names resolving webpage, which features a list of links that Complainant claims direct users to third parties. See Amend. Compl. Annex 13. Therefore, the Panel concludes that Respondent registered and uses the <adwordfinancial.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant submits that Respondent inactively holds the disputed domain names. Inactive holding of a confusingly similar domain name may evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Once again, the Panel notes that Complainant provides a printout showing that the resolving webpage for the <adwordsbilling.com> domain name is under construction, and Complainant submits that the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, and <adwords-billing.com> domain names do not resolve to active websites. See Amend. Compl. Annex 13. Having regard to the totality of the evidence, the Panel accepts that submission. Therefore, the Panel concludes that Respondent inactively holds the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, and <adwordsbilling.com> domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ADWORDS mark prior to registering the disputed domain names. Actual knowledge may indicate bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant provides printouts from its own website detailing its services associated with the ADWORDS mark, as well as evidence of media recognition. See Compl. Annexes 6 and 7. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ADWORDS mark prior to registering the disputed domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ADWORDS mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adwords-financial.com>, <billingadwords.com>, <adwords-accounting.com>, <adwords-billing.com>, <adwordfinancial.com>, and <adwordsbilling.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 3, 2018
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