Google Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1506001625734
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleart.com>, registered with Internet.bs Corp.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015.
On June 30, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <googleart.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@googleart.com. Also on July 2, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
(i) Complainant owns the GOOGLE mark through registration with numerous trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, filed Sept. 16, 1999, registered Jan. 20, 2004). Complainant uses the GOOGLE mark to identify a wide range of Internet-related products and services, including Internet search and online advertising services. The <googleart.com> domain name is confusingly similar to the GOOGLE mark. The domain name incorporates the mark in full, adds the generic term “art,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant. Respondent is not commonly known by the disputed domain name nor by Complainant’s GOOGLE mark, as nothing in the WHOIS information for the disputed domain name identifies the registrant as “Google” or “Google Art.” Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses Complainant’s mark to attract Internet users, then diverts them to commercial third-party websites, presumably for click-through revenue. Additionally, Respondent’s disputed domain name redirects Internet users to at least two websites that appear to distribute malware. Further, at least three of the third-party websites connected to the disputed domain name appear to be used for “phishing.”
(iii) Respondent has engaged in bad faith registration and use of the <googleart.com> domain name pursuant to Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Additionally, Respondent’s disputed domain name redirects users to third-party websites, presumably for financial gain as per Policy ¶ 4(b)(iv). Respondent uses the disputed domain name to install malware onto visitors’ computers. The disputed domain name is used in furtherance of a phishing scheme, in violation of Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response for the Panel’s consideration. The Panel notes that the <googleart.com> domain name was registered on July 12, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 that it owns the GOOGLE mark through registration with numerous trademark authorities, including the USPTO (e.g., Reg. No. 2,806,075, filed Sept. 16, 1999, registered Jan. 20, 2004). Complainant states that it uses the GOOGLE mark to identify a wide range of Internet-related products and services, including Internet search and online advertising services. Prior panels have concluded that a registration with the USPTO is sufficient to establish rights in a mark regardless of where respondent is located. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Additionally, prior panels have concluded that the relevant date for determining rights in a registered mark is the date of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel therefore determines that Complainant has established rights in the GOOGLE mark under Policy 4(a)(i), dating back to September 16, 1999.
Complainant claims that the <googleart.com> domain name is confusingly similar to the GOOGLE mark. The domain name incorporates the mark in full, adds the generic term “art,” and adds the gTLD “.com” to the domain name. Prior panels have found that simply adding a generic term to an otherwise incorporated mark does not adequately distinguish the disputed domain name from the mark. See A Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, the addition of a gTLD has been viewed as irrelevant in confusing similarity analysis by past panels. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel determines that such modifications to the GOOGLE mark do not distinguish the disputed domain name from the incorporated mark, and therefore finds confusing similarity under Policy ¶ 4(a)(i).
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 claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that it has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant. Complainant insists that Respondent is not commonly known by the disputed domain name nor by Complainant’s GOOGLE mark, as nothing in the WHOIS information for the disputed domain name identifies the registrant as <googleart.com>. The Panel sees in Complainant’s Attached Exhibit 12 that the WHOIS information for the disputed domain name lists “Ryan G Foo / PPA Media Services” as the registrant of record. As Respondent has failed to submit any contentions refuting Complainant’s allegations, the Panel determines there is no basis to find Respondent is commonly known by the <googleart.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent uses Complainant’s mark to attract Internet users, then diverts them to commercial third-party websites, presumably for click-through revenue. The Panel sees in Complainant’s Attached Exhibit 11 that users are redirected to web pages that are unrelated to Complainant’s business, which prior panels have held to be evidence that a respondent lacks rights or legitimate interests in a disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel finds that Respondent’s disputed domain name lacks a bona fide offering of goods or services under Policy ¶ 4(c)(i). As Respondent likely seeks to profit through consumer confusion, there can logically be no legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Additionally, Complainant asserts that Respondent’s disputed domain name redirects Internet users to at least two websites that appear to distribute malware. Prior panels have found that such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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). This Panel finds Respondent’s disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii).
Further, Complainant alleges that at least three of the third-party websites connected to the disputed domain name appear to be used for “phishing.” Complainant demonstrates that one of the landing websites displays a fraudulent offer to enrolls visitors in a drawing for gift in exchange for visitors’ personal information. Id. Past panels have found that a respondent’s use of a disputed domain name to perpetrate a phishing scheme evidences that a respondent lacks rights or legitimate interests in the disputed domain name. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). As Respondent appears to be involved in a phishing scheme, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent’s redirecting of Internet users to third-party websites constitutes bad faith registration and use under Policy ¶ 4(b)(iii), as it delays or impedes Complainant’s customers from finding its products and services. Past panels have found that disputed domain names that are used to redirect users to third party websites are disruptive, and therefore violate Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (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 to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). As the Panel finds that Respondent is a competitor of Complainant, the Panel concludes that Respondent has engaged in bad faith use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent’s disputed domain name redirects users to third-party websites, presumably for financial gain. Complainant asserts that Respondent uses the disputed domain name to redirect users to third-party websites unrelated to Complainant, presumably for click-through revenue. Previous panels have found that such conduct demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel agrees that Respondent is likely profiting through consumer confusion, and thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent uses the disputed domain name to install malware onto visitors’ computers, further demonstrating Respondent’s bad faith. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of malicious software evinces Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith).
Finally, Complainant claims that the disputed domain name is used in furtherance of a phishing scheme, in violation of Policy ¶ 4(a)(iii). Complainant demonstrates that one of the landing websites displays a fraudulent offer to enroll visitors in a drawing for gift in exchange for visitors’ personal information. Prior panels have found that phishing for users’ personal information is evidence of bad faith use under Policy ¶ 4(a)(iii). HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates). This Panel determines that Respondent’s use of the disputed domain name to perpetrate a phishing scheme is further evidence of bad faith under 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 <googleart.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 10, 2015
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