Google Inc. v. Ahmed Humood
Claim Number: FA1411001591796
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Ahmed Humood (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-domain.com> and <domainsgoogle.net>, registered with GODADDY.COM, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 24, 2014; the National Arbitration Forum received payment November 24, 2014.
On November 24, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <google-domain.com> and <domainsgoogle.net> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014, 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@google-domain.com, postmaster@domainsgoogle.net. Also on November 25, 2014, 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 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
Complainant makes the following contentions in this proceeding:
Complainant owns the GOOGLE mark as demonstrated by its numerous registrations with various trademark agencies including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). The GOOGLE mark identifies Complainant’s search services, and a wide range of computer and communications services. The <google-domain.com> and <domainsgoogle.net> domain names are confusingly similar to the GOOGLE mark.
Respondent is without rights or legitimate interests with respect to the <google-domain.com> and <domainsgoogle.net> domain names. Respondent is not commonly known by the disputed domain names. The website associated with the <google-domain.com> domain name is flagged as “dangerous,” and is a “verified fraud page or threat source.” Scans by the Trend Micro Safety Center indicated that this URL “contains malicious software or phishing.” The <domainsgoogle.net> domain name resolves to a website featuring a variety of pay-per-click advertisements, some of which offer products in competition with Complainant’s domain name registration and maintenance services. Complainant’s use of these domain names is not a bona fide offering, or any legitimate noncommercial or fair use.
Respondent engaged in bad faith use and registration. Respondent’s registration of two domain names that incorporate the GOOGLE mark indicates that Respondent has engaged in a pattern of bad faith. In addition, the <domainsgoogle.net> domain name is used to intentionally attract users to Respondent’s own website where Respondent profits through advertisements related to domain name registration and maintenance services. Respondent further deceives users into believing that these domain names are an official Google page by offering Complainant’s domain name registration and maintenance services, as well as a Google+ social media page. Next, Respondent’s use of the <google-domain.com> domain name in connection with malicious software or phishing demonstrates Respondent’s bad faith. Lastly, given the make up of the domain and its use, Respondent must have known of Complainant’s GOOGLE mark at the time of domain name registration, which further demonstrates Respondent’s bad faith.
Respondent makes the following contentions in this proceeding:
Respondent did not submit a formal Response in this case.
The Panel notes that Respondent sent a brief e-mail to the FORUM, received November 27, 2014.
The Panel notes that the disputed domain names were both registered June 24, 2014.
Complainant established rights and legitimate interest in the mark contained in its entirety within the disputed domain names.
Respondent has no such rights or legitimate interests in the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant asserts that the GOOGLE mark identifies its search services, and a wide range of computer and communications services. Complainant claims to own the GOOGLE mark as demonstrated by its numerous registrations with various trademark agencies including the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). The Panel agrees; Complainant holds numerous trademark registrations of the GOOGLE mark that establish Complainant’s rights in the mark for purposes of a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
Complainant argues that the <google-domain.com> and <domainsgoogle.net> domain names are confusingly similar to the GOOGLE mark. Complainant notes that both domain names incorporate the GOOGLE mark, add either the generic term “domain” or “domains,” and affix a generic top-level domain (“gTLD”). The Panel also notes that the <google-domain.com> domain name adds a hyphen. Prior panels have determined that addition of a hyphen and gTLD serve no distinguishing value in the confusing similarity analysis. See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). Further, panels determined that addition of a generic term does not distinguish a domain name from the incorporated mark, especially where the added term has some association with the mark, as is the case here given Complainant’s domain name registration and maintenance services. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)).
Accordingly, this Panel finds that the <google-domain.com> and <domainsgoogle.net> domain names are confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests with respect to the <google-domain.com> and <domainsgoogle.net> domain names. First, Complainant argues that Respondent is not commonly known by the disputed domain names as evidenced by the WHOIS information. The Panel notes that the WHOIS record for each domain name lists “Ahmed Humood” as registrant. The Panel notes as well that Respondent failed to submit any evidence to refute these allegations. Accordingly, based on the available evidence, the Panel finds no basis to support any finding that Respondent is commonly known by the disputed domain names. This Panel finds that Complainant satisfied the requirement of Policy ¶ 4(c)(ii).
Complainant argues that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Regarding the <google-domain.com> domain name, Complainant asserts the associated website is flagged as “dangerous,” and is a “verified fraud page or threat source.” See Compl., at Attached Ex. 11. Complainant also points to scans done by the Trend Micro Safety Center indicating that this URL “contains malicious software or phishing.” See Compl., at Attached Ex. 12. Prior panels have determined that a domain name used in connection with malicious software is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Based on the evidence submitted by Complainant indicating malicious software, the Panel finds that Respondent’s use of the <google-domain.com> domain name does not fall within the protections of Policy ¶¶ 4(c)(i) or (iii).
Moving to the <domainsgoogle.net> domain name, Complainant urges that this name resolves to a website featuring a variety of pay-per-click advertisements, some of which offer products in competition with Complainant’s domain name registration and maintenance services. The Panel notes that this domain name resolves to a website that includes article and links relating to Internet domain registration services and news, which evoke Complainant and its GOOGLE mark, such as “Google Launches New Domain Registration Service,” and “Google Gets Ready to Offer Internet Domain Registration Service,” as well as third-party links that compete with such offerings. See Compl., at Attached Ex. 14. The Panel agrees that Respondent’s use of the <domainsgoogle.net> domain name to promote domain name registration and maintenance services related to or competing with Complainant’s own offerings in the field is not a bona fide offering of goods or services, and is not a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s registration of two domain names that incorporate the GOOGLE mark is sufficient to show Respondent’s pattern of bad faith. The Panel notes these two domain names were registered the same day. Prior panels have held that registration of several infringing domain names satisfies the burden imposed by Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). The Panel accepts that two domain names incorporating the GOOGLE mark may amount to a pattern as described in Policy ¶ 4(b)(ii), and the Panel finds bad faith under the provision.
In addition, Complainant argues that the <domainsgoogle.net> domain name is used to intentionally attract users to Respondent’s own website where Respondent profits through advertisements related to domain name registration and maintenance services. The Panel recalls that the disputed domain name resolves to promote links related to Complainant such as, “Google Launches New Domain Registration Service,” “Google Gets Ready to Offer Internet Domain Registration Service,” as well as third-party links that compete with such offerings, including “Get your own domain name” and “Low Price Windows Hosting.” See Compl., at Attached Ex. 14. Complainant urges that Respondent deceives users into believing that these domain names are official Google pages by offering Complainant’s domain name registration and maintenance services, as well as a Google+ social media page. See id. Prior panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent uses the disputed domain name to promote advertisements related to or competing with the complainant. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). This Panel agrees that Respondent’s efforts to divert users seeking Complainant to its own website for commercial gain supports findings of bad faith pursuant to a Policy ¶ 4(b)(iv) analysis.
Next, Complainant argues that Respondent’s use of the <google-domain.com> domain name in connection with malicious software or phishing demonstrates Respondent’s bad faith. The Panel recalls that efforts to resolve the disputed domain name prompted warnings that the resolving website was “dangerous,” and is a “verified fraud page or threat source.” See Compl., at Attached Ex. 11. Complainant also claims that scans done by the Trend Micro Safety Center indicate that this URL “contains malicious software or phishing.” See Compl., at Attached Ex. 12. Prior panels have consistently found bad faith where the domain name is used in connection with malicious software. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). Here, the Panel agrees that Respondent engaged in bad faith conduct under a Policy ¶ 4(a)(iii) analysis with respect to the <google-domain.com> domain name as the resolving website has been flagged as one that infiltrates the user’s computer via malware.
Lastly, Complainant argues that Respondent must have known of Complainant’s GOOGLE mark at the time of domain name registration, which further demonstrates Respondent’s bad faith. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). This Panel makes that inference; Respondent had 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 and in competition with Complainant. See Compl., at Attached Ex. 14. Accordingly, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google-domain.com> and <domainsgoogle.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 7, 2015
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