Google Inc. v. ROB LIE / ROB SMITH
Claim Number: FA1507001631045
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, USA. Respondent is ROB LIE / ROB SMITH (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <igoogleapps.com> and <igooglemovies.com>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2015; the Forum received payment on July 29, 2015.
On July 29, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <igoogleapps.com> and <igooglemovies.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@igoogleapps.com, postmaster@igooglemovies.com. Also on August 3, 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 August 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
A. GOOGLE AND ITS GOOGLE AND GOOGLE PLAY MARKS AND
GOOGLE PLAY LOGO
2. Google is a Delaware corporation located in Mountain View, California, with offices throughout the world.
3. The GOOGLE name and company were created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the Google search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at www.google.com, and Google owns and operates websites at over 180 GOOGLE-formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE mark.
4. Google offers a wide range of Internet-related products and services, including Internet search and online advertising services. Google has a range of other Internet-related products and services, including file storage and synchronization for cloud storage, file sharing and collaborative editing; a social networking platform; a groups platform for users sharing a common interest; blog publishing; instant translations between dozens of languages; photo sharing and managing; financial news; full text search in books and magazines store in Google’s digital database; image and video searching; desktop and mobile web-mapping and geographical information; online shopping; an Internet browser; a service for creating and hosting applications and websites; email, document production, and storage tailored to businesses and other organizations; an online digital distribution platform that provides music, movies, books, and apps, news, maps, Web mail with instant messaging, instant messaging and video chat platform, voicemail, and an online payment service.
5. The Google search engine indexes one of the world’s largest collections of searchable documents. The Google search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content.
6. The GOOGLE mark has been found to be one of the top five Most Valuable Global Brands since 2001, with BrandFinance Global 500 ranking Google’s mark as the world’s most valuable brand in 2014, valued at $68 billion.
7. Google’s website also has been recognized as one of the most popular destinations on the Internet since well before the registration of the igoogleapps.com and igooglemovies.com domain names by Respondent on April 14, 2014 and May 18, 2014, respectively. comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004. According to comScore Media Metrix, Google.com is one of the most visited web properties in the world, with at least 190 million unique visitors per month in 2014. comScore also reports that Google is the world’s largest search engine, indexing pages from over 230 million domains and owning 62% of the market share in worldwide searches. In May 2011, Google surpassed 1 billion visitors globally over Google.com. It reaches over 200 million users worldwide.
8. Alexa, a web traffic ranking company, also lists Google as one of the top websites in the world for web traffic.
9. Google has consistently been honored for its technology and its services, and has received numerous industry awards.
10. The GOOGLE mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services. The GOOGLE mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google. As a result, the GOOGLE mark and name symbolize the substantial goodwill associated with Google. Due to widespread and substantial international use, the GOOGLE mark and name have become famous.
10. On March 6, 2012, Google began using the mark GOOGLE PLAY and the associated logo (image redacted) in connection with an online retail store that allows users to browse, purchase and download music, books, magazines, movies and TV shows, as well as applications and games for use with devices powered by Google’s Android software platform. From its inception, the Google Play store has garnered significant media attention and coverage, and has attracted millions of users. As of May 2015, Google Play hosts over one million apps in its catalog. As of May 2012, over 15 billion applications had been downloaded from the Google Play catalog. By May 2015, this number had grown to over 50 billion downloads. People from 190 countries download apps from Google Play everyday. Google Play Games has activated more than 180 million users from November 2014 to May 2015. There are more than 30 million songs, tens of thousands of new release movies and TV shows, more than 5 million book titles, and over 2,000 news sources available on Google Play.
22. Google owns numerous trademark registrations for the GOOGLE mark in the United States, China and a wide range of jurisdictions throughout the world, many dating back to as early as 1998. Google also owns a pending application to register [image redacted] (Serial No. 85/563,165) in the U.S. Patent and Trademark Office, with a filing date of March 7, 2012, as well as registrations for in Norway, Iceland, Columbia, Hong Kong, Japan, Kenya, Serbia, Singapore, and Switzerland, and applications for registration of that mark in other countries, which have the same effective filing date as the United States application for the [redacted image] mark. See records from the U.S. Patent and Trademark Office for Google’s pending applications to register [redacted image], as well as registration certificates from Norway, Iceland, Colombia, Hong Kong, Japan, Kenya, Serbia, Singapore and Switzerland. In addition, Google owns a registration for the Google Play logo (“[redacted image]”) in the European Union (No. 011838539), which issued on October 16, 2013. Each of Google’s trademark registrations for the GOOGLE and [redacted image]marks and Google Play logo remains valid and in full force and effect.
B. RESPONDENT AND THE DOMAIN NAMES
23. WHOIS records identify Respondent as Rob Lie and Rob Smith.
24. As shown in the WHOIS records, Respondent registered the igoogleapps.com domain name on April 14, 2014 and the igooglemovies.com domain name on May 18, 2014, well after Google acquired protectable rights in the GOOGLE mark.
25. The igoogleapps.com domain name resolves to a website that prominently displays the name “iGoogleApps” and purports to allow users to download, among other things, mobile device applications, movies and television programs. The website mimics the overall “look and feel” of the Google Play website, including the use of a logo ([redacted image]) that resembles the Google Play logo ([redacted image]), using similar colors in a similar arrangement. In addition, the website contains advertisements for Google TV, which reinforces the false association of the resolving website with Google.
26. When the undersigned counsel clicked on various movie links at the igoogleapps.com website, counsel was taken to a second webpage showing an advertisement for “www.popcorntimetv.com.” The advertisement reads: “Watch Full Movies.” A separate advertisement for Popcorn Time appears on the igoogleapps.com home page, and when the advertisement is clicked, it takes the user directly to the Popcorn Time website. The igoogleapps.com website also contains advertisements for “iMovies” and screenshots from the website that resolves from the igooglemovies.com domain name, which is the second domain name at issue in this proceeding.
27. When the undersigned counsel clicked on the Google TV advertisement on the igoogleapps.com website, counsel was directed to a website for “BoxVii,” located at www.boxvii.com. Although “Google TV” is displayed in the header for the landing page for that site, BoxVii does not offer any product or service of Google. BoxVii purports to offer for sale a “MediaTimeTV Box” for streaming Internet, TV shows, movies and other content. Presumably, Respondent receives referral fees when Internet users click on the advertisements for Popcorn Time and BoxVii.
28. The igooglemovies.com domain name resolves to a website for a company doing business as “iMovies.” Similar to the service that Complainant provides at the Google Play online store, which allows users to download movies, apps and telephone shows, the website resolving from the igooglemovies.com domain purports to offer a device and an app that provide access to movies, television shows, apps and other entertainment from the web. Significantly, the igooglemovies.com website contains an “iMovies China App” advertisement that re-directs to the igoogleapps.com website, and contains an “iMovies English App” advertisement that re-directs to the same Popcorn Time website that is linked from igoogleapps.com. Id. The igooglemovies.com website also purports to sell for $149.00 the same MediaTimeTV Box that is linked to from igoogleapps.com. Presumably, Respondent also receives referral fees when Internet users click on the advertisements for Popcorn Time on the igooglemovies.com website.
VI. LEGAL GROUNDS
This Complaint is based on the following legal grounds.
A. LIKELIHOOD OF CONFUSION – RULE 3(B)(IX)(1); POLICY ¶4(A)(I)
29. Google has used the GOOGLE mark since well before April 14, 2014 and May 18, 2014, the dates that Respondent registered, respectively, the igoogleapps.com and igooglemovies.com domain names. Indeed, Google owns registrations for the GOOGLE mark in the United States and China that issued about a decade prior to the registration date of the Domain Names. 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 Names. See Google, Inc. v. DktBot.org, FA286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
30. A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the igoogleapps.com and igooglemovies.com domain names incorporate Complainant’s famous GOOGLE mark in its entirety.
31. Further, the additional wording in the Domain Names fails to differentiate the Domain Names from Complainant’s famous GOOGLE mark. In registering igoogleapps.com, Respondent has merely added to Google’s famous mark the common prefix “i,” the generic wording “apps” and a generic top-level domain “.com.” In registering igooglemovies.com, Respondent has merely added to Google’s famous mark the common prefix “i,” the generic wording “movies” and a generic top-level domain “.com.” Respondent’s addition of the letter “i” is not sufficient to distinguish the Domain Names from Google’s mark. See America Online, Inc. v. Informatics, Inc., FA0104570 (Nat. Arb. Forum Mar. 25, 2002) (finding that the addition of the letter “i” did not to distinguish the domain name “iaol.com” from the marks AOL and AOL.COM); InPhonic, Inc. v. Geer, FA0452534 (Nat. Arb. Forum May 16, 2005) (finding the domain name “iinphonic.com” confusingly similar to the mark INPHONIC).
32. Additionally, the added wording “apps” and “movies” is non-distinctive in this context. The term “apps” is a generic term for the applications that are purportedly offered at the igoogleapps.com website. The term “movies” is a generic term for the movies that purportedly can be streamed through the device and app offered through the igooglemovies.com website. It is well-established that the mere addition of generic matter to a complainant’s mark is insufficient to avoid confusing similarity. See Google Inc. v. Gillespie, FA1434643 (Nat. Arb. Forum (Nat. Arb. Forum May 10, 2012) (finding that the addition of the generic term “apps” failed to distinguish the domain names “googleiapps.com”, “googlenewiapps.com”, “googlebestiapps.com” from the GOOGLE mark); Google Inc. v. Crawford, FA1564567 (Nat. Arb. Forum July 17, 2014) (finding that the addition of the generic terms “apps” and “galore” failed to distinguish the domain name “googleglassappsgalore.com” from the GOOGLE GLASS mark).
33. Because the dominant portion of the Domain Names remains Google’s highly distinctive and famous GOOGLE mark, the Domain Names retain an overall commercial impression of being connected with Google. See Yoga Works, Inc. v. Jenna Arpita d/b/a/ Shanti Yoga Works, FA155461 (Nat. Arb. Forum June 17, 2003) (finding <shantiyogaworks.com> domain name confusingly similar to complainant’s YOGA WORKS mark because, despite the addition of “shanti”, the dominant feature of the domain name is complainant’s mark); see also Google, FA1434643 (finding “googleiapps.com” confusingly similar to the GOOGLE mark). Given the similarity between GOOGLE and IGOOGLEAPPS and IGOOGLEMOVIES in terms of their appearance, sound, and commercial impression, users are likely to assume that the Domain Names are owned or authorized by Google.
34. As for Respondent’s addition of the generic top-level domain “.com”, it is well established that this “does nothing to relieve the confusing similarity [of the Domain Names] under Policy ¶4(a)(i), as a top-level domain is a requirement for all domain names.” Register.com, Inc. v. Skander c/o Web Registration Service Dot Liban, FA029513 (Nat. Arb. Forum Aug. 22, 2007).
35. Accordingly, the Domain Names are confusingly similar to Complainant’s GOOGLE mark.
B. NO RIGHTS OR LEGITIMATE INTERESTS – RULE 3(B)(IX)(2); POLICY ¶4(A)(II).
36. As Panels have noted in evaluating infringing GOOGLE-formative domain names, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” Google Inc. v. Mikel M Frieje, FA102609 (Nat. Arb. Forum Jan. 11, 2002). Given Complainant’s widespread and prominent use of the GOOGLE mark, as well as the mark’s distinctiveness and fame, there is no question that Respondent is familiar with, and is attempting to trade off of the goodwill embodied in Google’s famous mark, and has deliberately chosen the Domain Names to create an association with Google. This is evidence that Respondent does not have rights or legitimate interests in the Domain Names. See Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that respondent lacked rights and legitimate interests in the domain name because respondent was not authorized to use complainant’s TELSTRA marks, and because TELSTRA is an invented term, it is not a mark that another would legitimately choose unless seeking to create an impression of an association with complainant).
37. There is no evidence that Respondent has any rights or legitimate interests in the Domain Names. Google has not authorized Respondent to register or use the Domain Names, nor is Respondent affiliated with, associated with, or otherwise endorsed by Google. Unlicensed, unauthorized use of a domain that incorporates a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Names. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA076561 (Nat. Arb. Forum Oct. 26, 2007); Fair Isaac Corp. v. Michele, FA486147 (Nat. Arb. Forum Mar. 30, 2013) (“Respondent could not have developed any rights in the FICO [m]ark, unless Complainant licensed the FICO mark to Respondent or otherwise allowed Respondent to use it.”).
38. Respondent’s WHOIS information for the Domain Names does not identify the registrant as Google and/or IGoogleApps or IGoogleMovies, and provides no evidence that Respondent is known by those names. A registrant may be found to lack any rights or legitimate interest in a domain name where there is no indication in the record that it is known by that name. See Popular Enterprises, LLC v. Sung-a Jang, FA0811921 (Nat. Arb. Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name.”); see also Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Nat. Arb. Forum Oct. 29, 2013) (some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record”); Braun Corp. v. Loney, FA0699652 (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 domain names).
39. Moreover, there is no evidence that Respondent was “commonly known” as Google and/or IGoogleApps or IGoogleMovies prior to its registration of the igoogleapps.com or igooglemovies.com domain names. See, e.g., Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA109402 (Nat. Arb. Forum Jan. 4, 2008) (“… other ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”).
40. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names under Policy ¶¶4(c)(i) or 4(c)(iii). The igoogleapps.com domain name resolves to a website that purports to offer users the ability to download, among other things, applications, movies and television shows. The igooglemovies.com domain name resolves to a website that purports to offer for sale a device and an app that allows users to access television, movies, apps and other entertainment from the Internet. Because Google offers consumers the ability to download apps, movies and television programs through the Google Play website, the services and products offered at the igoogleapps.com and igooglemovies.com websites compete directly with Complainant’s services. By using the Domain Names in this manner, Respondent is diverting Internet users seeking Google’s services to Respondent’s own websites, and thereby competing with Complainant’s business. Respondent then profits from consumers who are mistakenly diverted to Respondent’s website under the false belief that they have reached a site operated or endorsed by Google. Panels have held that a respondent’s use of a domain name to divert Internet users to its own website for profit and to offer goods and services in competition with those of a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Google Inc. v. one to one marketing / one to one firm, FA1415180 (Nat. Arb. Forum Dec. 20, 2011) (finding that respondent has no rights or legitimate interests in the domain name <googlegulf.com> where the domain name entirely incorporates the complainant’s GOOGLE mark and resolves to a website “offering competing search optimization services”); Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)); 1-800-Pack-Rat, LLC v. Pack Rat Moving Company c/o Zachary Bradley, FA312052 (Nat. Arb. Forum Apr. 23, 2010) (finding respondent’s use of domain to resolve to a website offering competing moving services did not constitute a bona fide offering of goods or services according to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
41. Further, both Domain Names resolve to websites that feature advertising links to third-party websites that are unrelated to the Complainant. For example, both websites display or link to advertisements for www.popcorntime.com, which purports to offer users the ability to download copyrighted material for free. Respondent presumably profits commercially from this diversionary use of the Domain Names. Respondent’s use of the Domain Names to collect revenue by exploiting the confusing similarity between the Domain Names and Google’s famous GOOGLE mark to attract Internet users and divert such users to third-party webpages 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). See ALPITOUR S.p.A. v. balata inc, FA0888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that respondent’s use of the disputed domain name to operate a website that features links to various commercial websites from which respondent presumably receives referral fees was not a bona fide offering of goods or services or legitimate non-commercial or fair use under the Policy); WeddingChannel.com Inc. v. Vasiliev, FA0156716 (Nat. Arb. Forum June 12, 2003) (finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark and thereby collect referral fees was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
42. In furtherance of its scheme to divert unsuspecting Internet users away from Google’s website to Respondent’s own website and the websites of others, Respondent, in the igoogleapps.com website, has imitated the overall “look and feel” of Complainant’s Google Play website and uses a logo ([redacted image]) that closely resembles Google’s Google Play logo ([redacted image]). Respondent’s efforts to pass itself off as Complainant online, for Respondent’s commercial gain, is 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). See Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark, and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
43. The record thus clearly demonstrates that Respondent lacks any rights or legitimate interest in the Domain Names.
C BAD FAITH – RULE 3(B)(IX)(3); POLICY ¶4(A)(III).
44. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Names opportunistically and in bad faith. Given the fame of the GOOGLE mark, the extensive media coverage of Complainant and its mark, and Google’s worldwide trademark filings, it is inconceivable that Respondent created the Domain Names independently. See Google Inc. v. Publica, FA1294447 (Nat. Arb. Forum Jan. 11, 2010) (“the fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the Registrant created the Domain Name independently”); The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA112627 (Nat. Arb. Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”). The fact that Respondent registered two domain names containing the GOOGLE mark – including one (igoogleapps.com) which resolves to a website that mimics the overall “look and feel” of the Google Play website and the use of a logo ([redacted image]) similar to the Google Play logo ([redacted image]), and another (igooglemovies.com), which resolves to a website that offers a device and app to access movies, television shows and other content from the Internet that compete directly with the services provided by Complaint through its Google Play website – is further evidence that Respondent had actual knowledge of the GOOGLE mark and registered the Domain Names in bad faith. See Google, Inc. v. Rusev, FA466022 (Nat. Arb. Forum June 3, 2005) (concluding that respondent registered the disputed domain with actual knowledge of complainant’s rights due to the connection between respondent’s website and complainant’s business, which was evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)).
45. Moreover, even constructive knowledge of famous marks like GOOGLE is sufficient to establish registration in bad faith. Google v. Abercrombie 1, FA101579 (Nat. Arb. Forum Dec. 10, 2001) (“Because of the famous and distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name googld.com].”).
46. Likewise, where a domain name is “so obviously connected with such a well- known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000- 0226 (WIPO May 17, 2000). Moreover, because “Google” has no meaning other than as Complainant’s trademark, Respondent’s use of that term clearly indicates an attempt to trade on Complainant’s goodwill in the famous GOOGLE mark.
47. Respondent’s registration and use of the GOOGLE mark as part of the Domain Names to attract Internet users to Respondent’s websites at igoogleapps.com and igooglemovies.com, where Respondent provides its own services and products that directly compete with services provided at Complainant’s Google Play online store, constitutes bad faith registration and use under Policy ¶¶4(b)(iii) and 4(b)(iv). Such use is inherently disruptive to Complainant’s business under Policy ¶ 4(b)(iii), “as it delays or impedes Complainant’s legitimate customers and potential customers from finding Complainant’s [legitimate] services and products.” See, e.g., Salesforce.com v. Mandi Sun / Sun Man di / sunmandi, FA389992 (Nat. Arb. Forum June 27, 2011); Microsoft Corporation v. N/A / Bellamy Charles, FA448349 (Nat. Arb. Forum Jul. 23, 2012) (finding registration and use in bad faith where respondent used the domain name in question “to offer the download of competing computer safety software,” thereby disrupting complainant’s business).
48. Respondent’s use of the Domain Names to redirect unsuspecting Internet users who are looking for Complainant’s website to third-party websites, such as popcorntimetv.com and boxvii.com, that feature goods and services unrelated to Complainant, presumably for the purpose of collecting referral fees, also demonstrates bad faith registration and use under Policy ¶4(b)(iv). See ALPITOUR S.p.A., 0888649 (finding that respondent’s use of the disputed domain name for commercial gain by featuring links to various websites from which respondent presumably receives referral fees evidenced bad faith registration and use under Policy ¶4(b)(iv)); WeddingChannel.com Inc., FA0156716 (Nat. Arb. Forum June 12, 2003) (finding bad faith registration and use where the disputed domain name was used to redirect Internet users to third-party websites and presumably to collect referral fees).
49. Further, Respondent’s use of the igoogleapps.com domain name to mimic the Google Play website, including the use of a logo ([redacted image]) that resembles the Google Play logo ([redacted image]), constitutes “passing off and is further evidence of bad faith use and registration pursuant to Policy ¶4(a)(iii).” Google Inc. v. Publica, FA294447 (finding bad faith registration and use from respondent’s imitation of the structure and layout of complainant’s website) (citing Monsanto Co. v. Decepticons, FA101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the Respondent’s use of <monsantos.com> to misrepresent itself as the complainant supported a finding of bad faith)). Given Respondent’s registration of Domain Names that wholly incorporate the famous GOOGLE mark, it is impossible to conceive of any potential legitimate use of the Domain Names. As such, the Domain Names are being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark … Respondent has provided no evidence or suggestion of a possible legitimate use…. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”).
50. Based on the foregoing, Respondent has registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged 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 claims the Registrants of the <igoogleapps.com> and <igooglemovies.com> domain names should be treated as a single Respondent because they have (i) the same email address listed in their WHOIS records, (ii) the same name for their servers, (iii) the same IP address and (iv) the same IP location. The resolving web sites at both domain names have the same format, and each domain name is being used in the same manner. In the absence of an explanation from Respondent, the Panel finds both domain names are owned and controlled by the same single person.
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 prove the following three elements to obtain an order canceling or transferring a domain name:
(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 claims rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,806,075, registered on January 20, 2004). Registrations with the USPTO (or any other governmental trademark authority) are sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant has rights in the GOOGLE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <igoogleapps.com> and <igooglemovies.com> are confusingly similar to the GOOGLE mark because each domain contains the entire mark, altered by only the additions of the letter “i,” the words “apps” or “movies,” and the gTLD “.com.” The addition of “.com.” is irrelevant to Policy ¶4(a)(i) analysis because a TLD is required by domain name syntax. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The letter “i” and the words “apps” and “movies” are all generic or otherwise minor and irrelevant changes. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also 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)). Respondent’s <igoogleapps.com> and <igooglemovies.com> are confusingly similar to the GOOGLE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 Respondent is not commonly known by the <igoogleapps.com> and <igooglemovies.com> domain names. The WHOIS information lists “Rob Lie” and “Rob Smith” as Registrants. Respondent has not provided any evidence to indicate it is commonly known by the domain names. Complainant’s GOOGLE mark is so famous it would be impossible for Respondent to innocently create it as a personal name by accident. Complainant has not authorized Respondent to use the GOOGLE mark. When domain names contain famous marks, it is very unlikely a respondent will be commonly known by such a domain. See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶4(c)(ii) does not apply to Respondent.”). This Panel finds Respondent is not commonly known by the <igoogleapps.com> and <igooglemovies.com> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the <igoogleapps.com> and <igooglemovies.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses each to offer products competing with Complainant’s products and services. Respondent offers download services for applications, movies and TV shows. The disputed domain names also feature unrelated third party advertisements for websites such as <popcorntime.com> and <boxvii.com>. Such uses are sufficient to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Complainant claims Respondent uses the <igoogleapps.com> domain name in an attempt to pass off as Complainant. The resolving website is designed to mimic a website operated by Complainant, including a stylistic logo related to Complainant’s “Google Play” services. Respondent’s attempting to pass itself off as Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)). Respondent fails to use the <igoogleapps.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively.
Finally, Respondent registered the <igoogleapps.com> domain name using a privacy service. This means Respondent did not publicly associate itself with the disputed domain name in any way. This means Respondent did not acquire any right to the <igoogleapps.com> domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <igoogleapps.com> and <igooglemovies.com> domain names to compete with Complainant in a disruptive manner. Respondent uses each domain name to offer download services for applications, movies and TV shows (which compete with Complainant’s services). Such a competitive use is sufficient to show bad faith use under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). This Panel finds Respondent registered and uses the <igoogleapps.com> and <igooglemovies.com> domain names in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent uses the <igoogleapps.com> and <igooglemovies.com> domain names to attract Internet users for commercial gain through its unrelated third party advertisements. Respondent has links and advertisements for the unrelated websites <popcorntime.com> and <boxvii.com>. Respondent presumably does this in exchange for referral fees. Hosting unrelated advertisements for profit constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). Respondent uses the <igoogleapps.com> and <igooglemovies.com> domain names in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent also registered and uses the <igoogleapps.com> domain name in bad faith by using it in an attempt to pass itself off as Complainant. The domain name is designed to mimic a website operated by Complainant, including the stylistic logo related to Complainant’s “Google Play” services. “Passing off” constitutes bad faith registration and use under Policy ¶4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Respondent registered and uses the <igoogleapps.com> domain name in bad faith pursuant to Policy ¶4(a)(iii).
Complainant claims Respondent registered the <igoogleapps.com> and <igooglemovies.com> domain names with actual knowledge of Complainant’s rights in the GOOGLE mark. Complainant’s GOOGLE mark is so famous Respondent had to know about it, especially in light of the actual use of the web site to pass off Respondent as being related to (or the same as) Complainant. Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). This Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark at the time of registration, which means Respondent registered and uses the <igoogleapps.com> and <igooglemovies.com> domain names in bad faith under Policy ¶4(a)(iii).
Finally, Respondent registered the <igoogleapps.com> domain name using a privacy service. This raises the rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut this presumption. For this reason alone, the Panel finds bad faith regarding the <igoogleapps.com> domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <igoogleapps.com> and <igooglemovies.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, September 2, 2015
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