Google LLC v. Shaktidhara maharana
Claim Number: FA1712001761257
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is Shaktidhara maharana (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmailtechnicalsupportphonenumber.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 4, 2017.
On December 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmailtechnicalsupportphonenumber.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@gmailtechnicalsupportphonenumber.com. Also on December 6, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Google, has used its GMAIL mark since 2004 in connection with the provision of email and electronic messaging services. Complainant established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,150,462, registered Oct. 3, 2006). Respondent’s <gmailtechnicalsupportphonenumber.com>[1] domain name is confusingly similar to Complainant’s GMAIL mark because it merely appends the descriptive terms “technical,” “support,” and “phone number,” as well as the “.com” generic top-level domain (“gTLD”), to the fully incorporated mark.
2. Respondent does not have rights or legitimate interests in the <gmailtechnicalsupportphonenumber.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GMAIL mark in any fashion, and Respondent is not commonly known by the disputed domain name.
3. Respondent is not using <gmailtechnicalsupportphonenumber.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users from Complainant’s website to Respondent’s website.
4. Respondent attempts to pass off as Complainant by using the <gmailtechnicalsupportphonenumber.com> domain name to resolve to a website that prominently displays Complainant’s GMAIL mark. Further, the website purports to offer competing technical support services in exchange for Internet users’ personal information as part of a fraudulent phishing scheme.
5. Respondent registered and is using the domain name in bad faith. Respondent uses the domain name to create a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Respondent uses the domain name to create confusion and conduct a phishing scheme. Further, Respondent had actual knowledge of Complainant’s rights in the GMAIL mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GMAIL mark. Respondent’s domain name is confusingly similar to Complainant’s GMAIL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gmailtechnicalsupportphonenumber.com> domain name and that Respondent registered and uses the 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(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.”).
Complainant has registered its GMAIL mark with the USPTO (e.g., Reg. No. 3,150,462, registered Oct. 3, 2006). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark for the purposes of Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). The Panel holds that Complainant has established rights in the GMAIL mark.
Next, Complainant contends that Respondent’s <gmailtechnicalsupportphonenumber.com> domain name is confusingly similar to Complainant’s GMAIL mark because it merely appends the descriptive and non-distinctive terms “technical,” “support,” and “phone number,” as well as the gTLD “.com” to the fully incorporated mark. The addition of descriptive terms and a gTLD do not negate confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel agrees that Respondent’s <gmailtechnicalsupportphonenumber.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <gmailtechnicalsupportphonenumber.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <gmailtechnicalsupportphonenumber.com> domain name. Complainant has provided uncontradicted evidence it has not licensed or otherwise authorized Respondent to use its GMAIL mark in any fashion. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <gmailtechnicalsupportphonenumber.com> domain name lists “Shaktidhara maharana” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <gmailtechnicalsupportphonenumber.com> domain name per Policy ¶ 4(c)(ii).
Further, Complainant contends, without contradiction in the record, that Respondent is not using <gmailtechnicalsupportphonenumber.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. According to Complainant Respondent uses <gmailtechnicalsupportphonenumber.com> to divert Internet users from Complainant’s website to Respondent’s website which shows Complainant’s GMAIL mark for the purpose of carrying out a phishing scam. Use of a domain name to pass off as a complainant and phish for Internet users’ personal information is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has provided screenshots of the <gmailtechnicalsupportphonenumber.com> domain name’s resolving website which prominently features Complainant’s GMAIL mark and purports to offer technical support services which directly overlap with services offered by Complainant. Complainant further has shown that the resolving website prompts Internet users to provide personal information based on the apparent mistaken belief that the site is affiliated with Complainant’s business. The Panel agrees that Respondent is attempting to pass off as Complainant to further a phishing scheme, thus failing to use the <gmailtechnicalsupportphonenumber.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <gmailtechnicalsupportphonenumber.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. The records supports this assertion. Indeed, Complainant has provided screenshots of the <gmailtechnicalsupportphonenumber.com> domain name’s resolving website which show Complainant’s GMAIL mark and which purport to offer services that compete with Complainant’s email technical support services. This is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, Complainant argues the Respondent is using the domain name to conduct a phishing scheme which can demonstrate bad faith registration and use. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Screenshots of the domain name’s resolving website indicate that Internet users are prompted to supply personal information, such as their email password, under the false belief that technical support services will be provided. Therefore, the Panel concludes that Respondent attempts to phish for users’ information in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant last alleges that Respondent had actual knowledge of Complainant’s rights in the GMAIL mark at the time Respondent registered the <gmailtechnicalsupportphonenumber.com> domain name. Actual knowledge of a complainant’s rights in a mark has been found to constitute bad faith. WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Actual knowledge may be found where a mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). There is ample evidence in the record to support Complainant’s contention that the mark, GMAIL, is well known. Complainant has offered evidence that the results of a survey conducted by <pcworld.com>, showed that Complainant’s GMAIL Web Mail was the second best product of 2005. Thus, the Panel agrees with Complainant and holds that Respondent had actual knowledge of Complainant’s rights in the GMAIL mark when the <gmailtechnicalsupportphonenumber.com> domain name was registered thereby proving bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <gmailtechnicalsupportphonenumber.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: December 29, 2017
[1]Respondent registered the <gmailtechnicalsupportphonenumber.com> domain name on September 16, 2015.
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