Google Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1602001660797
Complainant is Google Inc. ("Complainant"), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Domain Admin / Whois Privacy Corp. ("Respondent"), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmailsupportaustralia.com> and <gmailhelpaustralia.com>, registered with TLD Registrar Solutions Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2016; the Forum received payment on February 12, 2016.
On February 15, 2016, TLD Registrar Solutions Ltd. confirmed by email to the Forum that the <gmailsupportaustralia.com> and <gmailhelpaustralia.com> domain names are registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 February 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@gmailsupportaustralia.com, postmaster@gmailhelpaustralia.com. Also on February 17, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 March 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant has used the GMAIL mark for many years in connection with its web-based email service, which has over one billion active monthly users. Complainant claims that the mark has become famous due to widespread international use. The GMAIL mark is registered in the United States, Australia, and many other jurisdictions.
The disputed domain names <gmailsupportaustralia.com> and <gmailhelpaustralia.com> were registered on November 10, 2014, and March 14, 2015, respectively. They were registered through a privacy service, concealing the identity of the actual registrant. The domain names resolve to nearly identical commercial websites that purport to offer technical support to users of Complainant's email service, including password recovery. Complainant asserts that Respondent is engaged in a phishing scheme, intended to defraud users into revealing their confidential passwords. On these grounds Complainant contends that the disputed domain names are confusingly similar to a mark in which it has rights, namely, GMAIL; that Respondent lacks rights or legitimate rights in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used 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 names registered by Respondent are 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 names; and
(3) the domain names have 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.").
Each of the disputed domain names corresponds to Complainant's GMAIL mark, adding the generic term "support" or "help," the geographic term "Australia," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Yahoo! Inc. v. Mahesh Rohatgi, D2015-2323 (WIPO Feb. 15, 2016) (finding <yahoo-support-australia.com> confusingly similar to YAHOO!); Google Inc. v. Akhil Mishra, FA 1617405 (Forum June 9, 2015) (finding <gmailhelpsupport.com> confusingly similar to GMAIL). The Panel finds that each of the disputed domain names is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's mark without authorization, and apparently their sole use has been in connection with a website that promotes competing services and likely a fraudulent phishing scheme. See, e.g., Yahoo! Inc. v. Mahesh Rohatgi, supra (finding lack of rights or legitimate interests under similar circumstances); Google Inc. v. Akhil Mishra, supra (same). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's use of the disputed domain names for websites that use Complainant's mark to promote competing services, likely in connection with a fraudulent phishing scheme, is indicative of bad faith under these provisions of the Policy. See, e.g., Yahoo! Inc. v. Mahesh Rohatgi, supra (finding bad faith under similar circumstances); Google Inc. v. Akhil Mishra, supra (same). Respondent's use of a privacy service to conceal its identity lends further support to an inference of bad faith intent. The Panel finds that the disputed domain names were registered and have been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmailsupportaustralia.com> and <gmailhelpaustralia.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 11, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page