Google LLC v. Sergei Babich
Claim Number: FA1801001768998
Complainant is Google LLC (“Complainant”), represented by Leila P. McClure of Dickinson Wright PLLC, Michigan, USA. Respondent is Sergei Babich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chromesearch.today>, registered with NameCheap, In..
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 January 26, 2018; the Forum received payment on January 26, 2018.
On January 26, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <chromesearch.today> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@chromesearch.today. Also on February 1, 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 February 26, 2018, 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 and Internet browser software. Complainant uses its CHROME mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,360,331 registered Dec. 25, 2007). Respondent’s <chromesearch.today> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive term “search” and the generic top-level domain (“gTLD”) “.today” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its CHROME mark in any fashion. Respondent is not commonly known by the <chromesearch.today> domain name as the WHOIS information of record lists “Sergei Babich” 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. Instead, the domain name resolves to a website that mimics Complainant’s search engine website and purports to provide identical services. Further, Respondent uses the domain name to surreptitiously install malware onto Internet users’ computers and to force visits to the <chromesearch.today> domain name website, whereby Respondent profits from page visits and through searches conducted on the site.
Respondent registered and is using the domain name in bad faith. Respondent uses the domain name to install malware on Internet users’ computers, which causes unwanted visits to the <chromesearch.today> website and removes the users’ ability to use another search engine or change settings such as the browser homepage. Additionally, Respondent creates a likelihood of confusion between Complainant’s CHROME mark and the disputed domain name for Respondent’s commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHROME mark due to the fame of the mark.
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 <chromesearch.today> 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 asserts rights in the CHROME mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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.”). Complainant provides copies of its USPTO registrations (e.g., Reg. No. 3,360,331 registered Dec. 25, 2007). The Panel finds Complainant has rights in the CHROME mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <chromesearch.today> domain name is confusingly similar to Complainant’s mark. Per Policy ¶ 4(a)(i), similar changes to a mark have been found insufficient to differentiate said mark from a disputed domain name containing the mark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Complainant asserts Respondent merely appends the descriptive term “search” and the generic top-level domain “.today” to the fully incorporated mark. The Panel finds Respondent’s <chromesearch.today> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <chromesearch.today> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHROME mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies Respondent as “Sergei Babich.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <chromesearch.today> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the disputed domain name to offer malware to unsuspecting Internet users. Use of a disputed domain name to offer malware downloads does not evince a finding that a respondent used said domain name in connection with a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant asserts that, when visiting Respondent’s disputed domain name, Internet users are faced with a page identical to that of Complainant and purports to offer search engine services. Complainant further contends that Respondent uses the disputed domain name to install a browser hijacker that forces visits to Respondent’s resolving website for Respondent’s presumed commercial gain. The Panel finds Respondent lacks rights and legitimate interests in the <chromesearch.today> domain name under Policy ¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts Respondent registered and is using the domain name in bad faith as Respondent uses the domain name to install malware on Internet user’s computers. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Use of a disputed domain name to install malicious software on unsuspecting Internet users’ computers does not evince a finding of good faith pursuant to Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Complainant asserts Respondent’s <chromesearch.today> domain name resolves to malicious software which causes Internet users to make forced, unwanted visits to Respondent’s <chromesearch.today> website and removes the user’s ability to use another search engine or change settings such as the browser homepage. The Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the CHROME mark prior to registration of the <chromesearch.today> domain name given the fame of the CHROME mark, the extensive media coverage of Complainant and its mark, and Complainant’s worldwide trademark filings.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 does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and is using the <chromesearch.today> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Commercially benefiting via intentional confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 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.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant asserts Respondent uses Complainant’s CHROME mark and a logo that closely resembles Complainant’s CHROME logo on a website designed to mimic Complainant’s search engine. The Panel finds Respondent attempted to commercially benefit off Complainant’s mark and registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
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 <chromesearch.today> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 5, 2018
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