Google Inc. v. Felin Georges
Claim Number: FA1601001657796
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, California, USA. Respondent is Felin Georges (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwordsgoogle.online>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2016; the Forum received payment on January 22, 2016.
On January 25, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <adwordsgoogle.online> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 January 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2016 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@adwordsgoogle.online. Also on January 25, 2016, 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 February 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <adwordsgoogle.online> domain name is confusingly similar to Complainant’s GOOGLE and ADWORDS marks.
2. Respondent does not have any rights or legitimate interests in the <adwordsgoogle.online> domain name.
3. Respondent registered and uses the <adwordsgoogle.online> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns both the GOOGLE and ADWORDS marks as demonstrated by registrations with the United States Patent and Trademark Office ("USPTO") (GOOGLE: Registration No. 2,806,075, registered Jan. 20, 2004; ADWORDS: Registration No. 2,794,616, registered Dec. 16, 2003). Complainant uses the well known GOOGLE and ADWORDS marks in connection with online products and services.
Respondent registered the <adwordsgoogle.online> domain name on November 10, 2015. The disputed domain name resolves to an inactive page, but Respondent uses the domain name for fraudulent emails.
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(f), 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.”).
The Panel finds that Complainant has rights in the GOOGLE and ADWORDS marks based on registration of the mark with the USPTO. Prior panels routinely find that registration of a mark with the USPTO demonstrates a complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even if respondent lives outside the country of registration. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); 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).
Respondent’s <adwordsgoogle.online> domain name is comprised of two of Complainant’s marks, GOOGLE and ADWORDS. The combination of multiple marks belonging to the same owner increases the likelihood of confusion between the disputed domain name and the marks. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). The disputed domain name also adds the gTLD “.online,” which does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <adwordsgoogle.online> domain name is confusingly similar to Complainant’s GOOGLE and ADWORDS marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the <adwordsgoogle.online> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant states that it has not authorized or licensed Respondent to use its marks in any way. Respondent has failed to produce a Response, and there is nothing in the record that would indicate that Respondent is commonly known by the disputed domain name. The WHOIS information for the <adwordsgoogle.online> domain name lists “Felin Georges” as the registrant. The Panel therefore finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that the disputed domain name currently resolves to an inactive page. Complainant has also provided evidence that Respondent is using the disputed domain name to pass itself off as Complainant in emails providing false bank account information. Prior panels have held that such use is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum October 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). Accordingly, the Panel finds that Respondent’s passing itself off as Complainant in connection with a fraudulent email scam does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to generate emails intended to confuse Internet users into believing Respondent is affiliated with Complainant. Respondent likely profits based on this confusion as victims send payments intended for Google to the bank account Respondent provides in fraudulent emails. The Panel finds that this disrupts Complainant’s business and constitutes bad faith under both Policy ¶¶ 4(b)(iii) and (iv). See Chevron Intellectual 14 Property LLC v. CHEVRON NIGERIA LIMITED, FA1633963 (Nat. Arb. Forum Sept. 19, 2015) (finding that the use of the disputed domain name to send e-mails that solicit information and money, posing as one of complainant’s subsidiaries, disrupts complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii)); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Complainant argues that, due to the fame of Complainant and its marks, and the fact that Respondent prominently displays Complainant’s mark and logos in fraudulent emails, Respondent must have had actual knowledge of Complainant and its rights in the marks prior to registering the disputed domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant and its rights in the GOOGLE and ADWORDS marks prior to registering the disputed domain name, bad faith under Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
The Panel finds that Complainant has satisfied 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 <adwordsgoogle.online> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 24, 2016
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