Google LLC v. Tim Sales
Claim Number: FA1712001764050
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Tim Sales (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlesalessupport.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 22, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlesalessupport.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 January 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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@googlesalessupport.com. Also on January 2, 2018, 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 January 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, Google LLC, offers a wide range of Internet-related products and services, including Internet search and online advertising services, such as its AdWords service. Complainant’s GOOGLE mark and company were created in 1997 and the Google search engine has become one of the largest, most highly recognized, widely used Internet search services in the world. Complainant established rights in the GOOGLE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Respondent’s <googlesalessupport.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic terms “SalesSupport” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated GOOGLE mark.
Respondent does not have rights or legitimate interests in the <googlesalessupport.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE mark in any fashion. Respondent is not commonly known by the <googlesalessupport.com> domain name as the WHOIS information of record lists “Tim Sales” as the registrant. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect Internet users to Complainant’s own website. Further, Respondent uses the domain name to pass itself off as Complainant’s affiliate in a fraudulent email phishing scheme for Respondent’s commercial gain.
Respondent registered and is using the <googlesalessupport.com> domain name in bad faith. Respondent uses the domain name to pass itself off as Complainant and create a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Respondent creates this confusion in users to conduct a fraudulent email phishing scheme. Respondent also uses false information in the WHOIS record. Further, Respondent had full knowledge of Complainant’s rights in the GOOGLE mark when Respondent registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <googlesalessupport.com> domain name.
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 claims rights in its GOOGLE mark by virtue of its registration of the mark with the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds that Complainant established rights in the GOOGLE mark.
Next, Complainant argues that Respondent’s <googlesalessupport.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic terms “sales” and “support” and the gTLD “.com” to the fully incorporated GOOGLE mark. The addition of generic terms and a gTLD to a mark does not negate confusing similarity between the mark and disputed domain name per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds that Respondent’s <googlesalessupport.com> domain name is confusingly similar to Complainant’s mark.
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its GOOGLE mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name per Policy ¶ 4(c)(ii). 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). Where a response is lacking, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed 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 <googlesalessupport.com> lists “Tim Sales” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <googlesalessupport.com> domain name.
Complainant argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent uses the domain name to pass itself off as Complainant’s affiliate in a fraudulent email phishing scheme for Respondent’s commercial gain. Use of a domain name to pass itself off as a Complainant and conduct a phishing scheme may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant alleges Respondent uses the <williamk@googlesalessupport.com> email address with a business endeavor purportedly aimed at managing Complainant’s Adwords accounts for third parties. Complainant further alleges that Respondent falsely claims to have worked for Complainant for more than 10 years and that Respondent has solicited and received credit card information from at least one third party individual on multiple occasions. The Panel finds that Respondent used the domain name to pass itself off as Complainant’s affiliate for the purpose of conducting an email phishing scheme and finds that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use and therefore lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent’s use of the <googlesalessupport.com> domain name to redirect Internet users to Complainant’s website is further evidence that Respondent lacks rights and legitimate interests in the domain name. Use of a domain name to redirect to a complainant’s own website may be evidence that a respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant argues that screenshots indicate the domain name resolves to Complainant’s own <google.com> website. Therefore, the Panel finds that Respondent is using the <googlesalessupport.com> domain name to redirect Internet users to Complainant’s website and finds that Respondent lacks rights and legitimate interests in the domain name.
Complainant has proved this element.
Complainant alleges that Respondent registered and is using the <googlesalessupport.com> domain name in bad faith by creating a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name in an email address to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein can be evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant contends Respondent profits from this confusion through the use of a fraudulent email phishing scheme, whereby Respondent steals personal and financial information from third parties. The Panel concludes that Respondent used the domain name to create a likelihood of confusion with Complainant’s mark for Respondent’s financial gain and finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant also contends that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) by disrupting Complainant’s business. Use of a disputed domain name to resolve to a Complainant’s own website may disrupt a complainant’s business and constitute bad faith. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC. v. Dragan Platic / Poste Restante, FA1401001537469 (Forum Feb. 13, 2014) (holding that the respondent’s behavior in redirecting Internet users to the complainant’s own website allowing it to improperly profit from the complainant’s affiliation program was indicative of the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii)). Complainant contends screenshots show that Respondent’s <googlesalessupport.com> domain name redirects to Complainant’s own website. The Panel finds this use indicates the domain name was registered and used in bad faith.
Finally, Complainant also contends that in light of the fame and notoriety of its GOOGLE mark, it is inconceivable that Respondent could have registered the <googlesalessupport.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant contends its GOOGLE mark is famous and has received media recognition for being one of the world’s top brands. Complainant further asserts that Respondent’s use of the domain name to resolve to Complainant’s own website, and to defraud consumers by indicating connection with Complainant’s Adwords program indicates it had actual knowledge of Complainant’s rights. The Panel finds Respondent had actual knowledge of Complainant’s rights in the mark and registered and uses the name in bad faith.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <googlesalessupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 31, 2018
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