DECISION

 

Google Inc. v. WILHELMUS LIEBRAND / SAJID ALI / ARSHAD FAROOQ

Claim Number: FA1710001754964

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA.  Respondent is WILHELMUS LIEBRAND / SAJID ALI / ARSHAD FAROOQ (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googleptv.com>, <googlektv.com>, and <googlegtv.com>,  registered with FastDomain Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 20, 2017; the Forum received payment on October 20, 2017.

 

On October 25, 2017, FastDomain Inc. confirmed by e-mail to the Forum that the <googleptv.com>, <googlektv.com>, and <googlegtv.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names.  FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 October 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2017 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@googleptv.com, postmaster@googlektv.com, postmaster@googlegtv.com.  Also on October 27, 2017, 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 November 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant operates one of the most highly recognized, and widely used Internet search services in the world. Complainant has rights in the GOOGLE mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 16, 1998). See Compl., Ex. 8. Respondent’s <googleptv.com>, <googlektv.com>, and <googlegtv.com> are confusingly similar to Complainant’s GOOGLE mark because the disputed domain names incorporate the mark in its entirety, adds the letter combinations

“PTV,” “KTV,” and “GTV,” and attaches a “.com” generic top-level domain

(“gTLD”).

2.    Respondent does not have any rights or legitimate interests in <googleptv.com>, <googlektv.com>, and <googlegtv.com>. Complainant has not authorized nor licensed Respondent to use the GOOGLE mark. Additionally, Respondent is not commonly known by the GOOGLE mark or any of the disputed domain names. In fact, other than Respondent’s email address that contains the GOOGLE mark, WHOIS information for <googleptv.com>, <googlektv.com>, and <googlegtv.com> identify the registrants as “Wilhelmus Liebrand,” “Sajid Ali,” and “Arshad Forooq” respectively. See Compl., Ex. 4. Furthermore, Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name. On information and belief, Respondent’s <googleptv.com>, <googlektv.com>, and <googlegtv.com> attempt to pass off as Complainant in order to obtain users’ personal information. In addition, Respondent’s <googlektv.com> resolves to a website that contains “related links” which purport to redirect to Complainant’s search engine and other services. See Compl., Ex. 11. Respondent’s <googleptv.com> and <googlegtv.com> are believed to be inactively held. Id.

3.    Respondent registered and used <googleptv.com>, <googlektv.com>, and <googlegtv.com> in bad faith. Respondent may offer services that directly compete with Complainant’s services, and are doing so in bad faith. Additionally, third party malware detection sites and antivirus scanners have found Respondent’s disputed domain names are malicious sites containing malware. See Compl., Ex. 10. Finally, Respondent registered the disputed domain names containing the GOOGLE mark, knowing that the mark is famous and unique, suggesting this was done opportunistically in bad faith.

 

B.   Respondent

1.    Respondent did not submit a response.

 

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 contends that Respondent is a single individual or entity operating under different aliases in order to conceal Respondent’s true identity and location, and to avoid the transfer of the disputed domain names. Complainant supports this by arguing the disputed domain names only differ by one letter and that each of the disputed domain names share the same name server locations. See Compl., Ex. 4 (showing the name server for each domain name as “<ns1.justhost.com>” and “<ns2.justhost.com>”).

                                          

The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled, and that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.

 

FINDINGS

1.    Respondent’s <googleptv.com>, <googlektv.com>, and <googlegtv.com> domain names are confusingly similar to Complainant’s GOOGLE mark.

2.    Respondent does not have any rights or legitimate interests in the <googleptv.com>, <googlektv.com>, and <googlegtv.com> domain names.

3.    Respondent registered or used the <googleptv.com>, <googlektv.com>, and <googlegtv.com> domain names in bad faith.

 

DISCUSSION

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 (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 and/or Confusingly Similar

Complainant claims rights in the GOOGLE mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,884,502, registered Sep. 16, 1998). See Compl., Ex. 8. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the GOOGLE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant alleges Respondent’s <googleptv.com>, <googlektv.com>, and <googlegtv.com> are confusingly similar to Complainant’s GOOGLE mark. Complainant argues Respondent’s disputed domain names all contain the GOOGLE mark, add letters to the mark, and attach the “.com” gTLD, all changes which are insufficient to create distinction between the mark and disputed domain names. Generally, adding letters to a mark fails to differentiate the mark from a disputed domain name. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). In this case, Respondent took the GOOGLE mark and added the letters “ptv,” “ktv,” “and “gtv.” It is worth noting that all disputed domain names only differ from each other by one letter. Furthermore, the addition of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to the GOOGLE mark, and thus Complainant has satisfied 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 shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 Respondent has no rights or legitimate interests in <googleptv.com>, <googlektv.com>, and <googlegtv.com> because Respondent is not authorized or licensed to use the GOOGLE mark nor is it commonly known by any of the disputed domain names. In the event a respondent fails to submit a response, panels may look at WHOIS information to determine whether a party is commonly known by a domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, WHOIS information provided to this Panel by Complainant shows the registrants for <googleptv.com>, <googlektv.com>, and <googlegtv.com> as “Wilhelmus Liebrand,” “Sajid Ali,” and “Arshad Forooq,” respectively. See Compl., Ex. 4 (WHOIS information for the disputed domain names). It is believed that all three registrants are alias for the same person or entity. Additionally, there is no evidence to suggest Respondent is commonly known by any variation of the GOOGLE mark or has been authorized or licensed to use the GOOGLE mark. Therefore, the Panel finds that Respondent is not commonly known by the GOOGLE mark, and lacks rights and legitimate interests in the domain names per Policy ¶ 4(c)(ii).

 

            Complainant further argues Respondent’s lack of rights or legitimate interests in the <googlektv.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends the <googlektv.com> domain name resolves to a parked webpage promoting hyperlinks purportedly related to Complainant. See Compl. Ex. 11. Such use is not indicative of rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making 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 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). The Panel therefore finds Respondent to lack rights and legitimate interests in the <googlektv.com> domain name per Policy ¶ 4(c)(i) and (iii).

 

Additionally, Complainant asserts Respondent fails to make an active use of the <googleptv.com> and <googlegtv.com> domain names. Failure to make active use of a disputed domain name may demonstrate a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant contends Respondent’s <googleptv.com> and <googlegtv.com> domain names do not resolve to active websites. See Compl., Ex. 11. It is worth noting that both sites appear to trigger malware warnings, indicating to users that both disputed domain names were used to conduct phishing schemes. There is no indication that either site will be used or developed. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <googleptv.com> and <googlegtv.com> domain names per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that to the extent any legitimate commercial services were to be offered at the domain names, such services would compete with Complainant’s own in bad faith. The use of a domain name to offer competing services can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). It is not always necessary to wait for a respondent to make use of a domain name before determining its bad faith. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Complainant does not expand on how Respondent’s use would be competitive with Complainant. Nevertheless, the Panel finds any future use of the domain names would be competitive and therefore in bad faith per Policy ¶¶4(b)(iii) and (iv).

 

Complainant further argues Respondent’s use of the domain names to distribute malware and/or phish for Internet users’ information is evidence of its bad faith registration and use. A respondent using a domain name to distribute malware or phish for consumers’ information can be evidence of bad faith per Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends attempts to visit the disputed domain names trigger malware warnings, and that several third party malware detection sites and antivirus scanners consider the websites associated with the domain names to be dangerous. See Compl. Exs. 10, 11. The Panel agrees and finds Respondent registered and is using the disputed domain names in bad faith.

 

Finally, Respondent argues that due to the fame and notoriety of the GOOGLE mark, it is inconceivable Respondent could have registered the domain names without actual or constructive knowledge of Complainant’s rights in the mark. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and conclude that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")."

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googleptv.com>, <googlektv.com>, and <googlegtv.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  December 4, 2017