Google LLC v. Satyajeet Tiwari
Claim Number: FA1802001770944
Complainant is Google LLC ("Complainant"), represented by Melissa Alcantara of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is Satyajeet Tiwari ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tezdownload.com>, registered with BigRock 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 8, 2018; the Forum received payment on February 8, 2018.
On February 8, 2018, BigRock Solutions Ltd confirmed by email to the Forum that the <tezdownload.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2018 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@tezdownload.com. Also on February 9, 2018, 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 5, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a well-known search engine and offers a variety of other Internet-related products and services. On September 17, 2017, Complainant launched a mobile payment service in India under the name Tez. Complainant uses the mark TEZ in connection with this service. The service allows users who download and install a mobile phone app to make payments to other users. Complainant provides information regarding the service via its website at <tez.google.com>; the application is available through the Google Play store and on iTunes.
Complainant has applied to register the TEZ mark in India and many other jurisdictions around the world. Complainant states that Tez has garnered significant media coverage since as early as September 13, 2017, prior to its launch, and provides copies of representative articles. The app was downloaded through the Google Play store more than 5 million times in its first month. Complainant asserts that consumers in India identify the TEZ mark with Complainant and its mobile payment service as a result of this media coverage and widespread use, and that the mark has thereby acquired secondary meaning, supporting a claim of common law trademark rights. Complainant notes that its claim of common law rights in the TEZ mark was accepted in a previous proceeding under the Policy, Google LLC v. Ankita Poonia, FA 1757741 (ForumDec. 5, 2017).
Respondent
registered the disputed domain name <tezdownload.com> on September
16, 2017. The domain name resolves to a website entitled "Tez App
Download." The site prominently displays the TEZ mark and other trademarks
owned by Complainant, including GOOGLE and Complainant's G logo. Complainant
alleges that Respondent's site gives the appearance that it is Complainant's
official website for downloading the Tez app, but in fact the app cannot be
downloaded from the site. The site also contains advertisements from which
Respondent presumably earns click-through fees. Complainant states that it has
not authorized Respondent to use its marks. Finally, Complainant also asserts
that Respondent has offered the disputed domain name for sale, citing a
statement to that effect that appears when the associated whois record is
retrieved using DomainTools.
Complainant contends on the above grounds that the disputed domain name <tezdownload.com> is confusingly similar to Complainant's TEZ mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being 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 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.").
To prevail under the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Although a trademark registration is not required, a complainant's burden is more onerous if its claimed rights arise solely at common law.
In order to show common-law rights for purposes of the Policy, Complainant must present evidence that the name has acquired secondary meaning—i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. Such evidence may include length and amount of sales under the claimed trademark, the nature and extent of advertising, consumer surveys, and media recognition. A conclusory allegation of common law rights is normally insufficient, even if undisputed. Where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.
Formation Capital, LLC v. VistaPrint Technologies Ltd, FA 1672252 (Forum May 24, 2016) (quoting TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013)) (citations omitted).
A pending application to register a mark does not give rise to trademark rights for purposes of the Policy. See id. The evidence presented by Complainant regarding media coverage and widespread use of the TEZ mark, however, is sufficient to demonstrate secondary meaning. See Google LLC v. Ankita Poonia, supra (finding common law rights in TEZ mark). The Panel finds that Complainant has sufficient rights in the TEZ mark to proceed under the Policy.
The disputed domain name <tezdownload.com> combines Complainant's TEZ mark with the generic term "download" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Ankita Poonia, supra (finding <tezappdownload.com> confusingly similar to TEZ); International Business Machines Corp. v. Scot Banner, D2008-0965 (WIPO Aug. 12, 2008) (finding <ibmdownload.com> confusingly similar to IBM). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
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 name <tezdownload.com> incorporates Complainant's mark without authorization, and is being used for a website designed to create and profit from confusion with Complainant's mark. Such use does not give rise to rights or legitimate interests in the domain name. See, e.g., Google LLC v. Ankita Poonia, supra.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, 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 name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), 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 registration of a domain name incorporating Complainant's mark and obviously intended to create confusion with Complainant, together with its use of that domain name for a website designed to contribute further to that confusion and generate revenues by displaying advertisements, is indicative of bad faith under the Policy. See, e.g., Google LLC v. Ankita Poonia, supra. The fact that the disputed domain name was registered almost immediately after Complainant's planned Tez service began to garner substantial media attention lends further support to the inference that Complainant registered the domain name with the intent to target Complainant's mark, see id., as does the posted offer to sell the domain name, see, e.g., Priceline.com, Inc. v. Ziquan Wu, FA 1547269 (Forum Apr. 15, 2014) (finding bad faith based in part on offer appearing in DomainTools whois record); Baylor University v. Stanley Pace, FA 1370357 (Forum Mar. 8, 2011) (same). The Panel finds that the disputed domain name was registered and is being 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 <tezdownload.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 8, 2018
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