Google Inc. v. Domain Admin / PrivacyProtect.org
Claim Number: FA1311001529084
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Domain Admin / PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mail-gmail.com>, registered with domain name registrar REG.RU LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 15, 2013, Domain names registrar REG.RU LLC confirmed by e-mail to the National Arbitration Forum that the <mail-gmail.com> domain name is registered with Domain names registrar REG.RU LLC and that Respondent is the current registrant of the name. Domain names registrar REG.RU LLC has verified that Respondent is bound by the Domain names registrar REG.RU 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 November 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mail-gmail.com. Also on November 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has been in business since 1997, and launched its Gmail electronic mail and messaging service in 2004. Complainant’s Gmail service has over 425 million active users worldwide as of June 2012.
2. Complainant is the owner of the GMAIL mark, used in connection with electronic mail and messaging services. Complainant owns registrations for the GMAIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,150,462 registered Oct. 3, 2006) and the IP Australia (“IPA”) (Reg. No. 1,049,129 registered April 4, 2005).
3. Respondent’s <mail-gmail.com> domain name is confusingly similar to Complainant’s GMAIL mark. The disputed domain name includes Complainant’s mark in its entirety while adding the descriptive term “mail,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
4. Respondent does not have any rights or legitimate interests in the <mail-gmail.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its GMAIL mark in any way. The WHOIS record indicates that the disputed domain name registrant is “Domain Admin / PrivacyProtect.org.”
b. The <mail-gmail.com> domain name resolves to a website virtually identical to the “Sign in” page that Complainant uses for its Gmail service. Compare Complainant’s Exhibits 8 with Exhibit 14. Respondent purportedly offers an e-mail service that competes with Complainant’s web-based e-mail service.
c. Complainant believes Respondent is attempting to collect personal information from unsuspecting Internet useres who are exposed to malicious software that is distributed via the <mail-gmail.com> domain name.
5. Respondent registered and is using the <mail-gmail.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by offering an e-mail service through a home page that looks virtually identical to the “Sign in” page that Complainant uses for its Gmail service. See Complainant’s Exhibit 14.
b. Respondent is attempting to pass itself off as Complainant, which is further evidence of bad faith.
c. Complainant believes Respondent’s conduct constitutes phishing because Respondent is distributing malicous software to Internet users in an attempt to obtain personal information from them.
d. Respondent had knowledge of Complainant’s GMAIL mark prior to registering the <mail-gmail.com> domain name because Complainant’s mark is well-known and the disputed domain name looks virtually identical to the “Sign in” page that Complainant uses for its Gmail service. See Complainant’s Exhibit 14.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google, Inc. who list its contact information as Mountain View, CA, USA. Complainant was established in 1997 and has offered a broad array of technological products and services since that time under its GOOGLE mark. Since 2004 Complainant has offered additional products and services under the mark GMAIL. Google owns registrations for the GMAIL mark in the USA and throughout the world including the countries of Australia and the Russian Federation.
Respondent is Domain Admin/PrivacyProtect.org of Queensland, Australia. Respondent’s registrar’s address is listed as Moscow, Russian Federation. Respondent registered the domain name on or about November 18, 2014.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it is the owner of the GMAIL mark, used in connection with electronic mail and messaging services. Complainant asserts it owns registrations for the GMAIL mark with the USPTO (e.g., Reg. No. 3,150,462 registered Oct. 3, 2006) and the Industrial Property Office in Australia (See Reg. No. 1,049,129 registered April 4, 2005). The Panel finds that Complainant has rights in the GMAIL mark under Policy ¶ 4(a)(i) via valid trademark registrations. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <mail-gmail.com> domain name is confusingly similar to Complainant’s GMAIL mark. Complainant notes that the disputed domain name includes Complainant’s mark in its entirety while adding the descriptive term “mail,” a hyphen, and the gTLD “.com.” The Panel notes that the addition of a descriptive term to a trademark does not sufficiently differentiate a disputed domain name from a trademark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also notes that the addition of a gTLD and a hyphen is irrelevant for the purposes are confusingly similarity analysis under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant contends Respondent does not have any rights or legitimate interests in the <mail-gmail.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its GMAIL mark in any way. Complainant notes that the WHOIS record indicates that the disputed domain name registrant is “Domain Admin / PrivacyProtect.org.” Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Because Respondent was not authorized by Complainant to use the GMAIL mark, and neither the WHOIS information nor the other evidence on record supports any contrary conclusion, the Panel finds that Respondent is not commonly known by the <mail-gmail.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <mail-gmail.com> domain name resolves to a website virtually identical to the “Sign in” page that Complainant uses for its Gmail service. Compare Complainant’s Exhibits 8 with Exhibit 14. Complainant also alleges that Respondent purportedly offers an e-mail service that competes with Complainant’s web-based e-mail service. In previous cases, panels have found that operating a competing business via a confusingly similar domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel here finds that Respondent is not making 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) because Respondent appears to be operating a competing e-mail service via the <mail-gmail.com> domain name.
Complainant believes Respondent is attempting to collect personal information from unsuspecting Internet useres who are exposed to malicious software that is distributed via the <mail-gmail.com> domain name. In Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004), the panel defined the act of phishing as “a practice that is intended to defraud consumers into revealing personal and proprietary information.” Further, past panels have held that a phishing scheme using a virus or malware demonstrates a lack of rights and legitimate interests in the disputed domain name. See Reed Elsevier Inc. v. Kolobanov, FA 1354985 (Nat. Arb. Forum Nov. 24, 2010) (finding no rights and legitimate interests when the disputed domain name resolved to a website that downloaded a virus on Internet users’ computers to acquire personal information). The Panel here finds that the apparent phishing scheme employed by Respondent provides further evidence of Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends Respondent registered and is using the <mail-gmail.com> domain name in bad faith. Complainant claims Respondent is disrupting Complainant’s business by offering an e-mail service through a home page that looks virtually identical to the “Sign in” page that Complainant uses for its Gmail service. See Complainant’s Exhibit 14. In previous cases, panels have held that operating a competing business via a confusingly similar domain name constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent registered and is using the <mail-gmail.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent purports to operate a competing e-mail service via the confusingly similar domain name.
Complainant alleges Respondent is attempting to pass itself off as Complainant, which is further evidence of bad faith. Past panels have held that schemes in which a respondent attempts to pass itself off as a complainant in an attempt to obtain personal information from Internet users constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent registered and is using the disputed domain name in a bad faith attempt to pass itself off as Complainant under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mail-gmail.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 27, 2013
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