Google LLC v. Somasundaram Ramkumar / Ramkumar / S Ramkumar / Ramkumar Corporation
Claim Number: FA1803001774832
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Somasundaram Ramkumar / Ramkumar / S Ramkumar / Ramkumar Corporation (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are, <gmailbeta.com>, <gogoogle.biz>, <googlelivemail.com>, <googlermail.com>, <googlermail.net>, <oogle.biz>, <androidone.biz>, and <youtubesketches.com>, registered with GoDaddy.com, LLC; <gmailbiz.com> and <youtubein.com>, registered with Name.com, Inc.; and <yutube.download>, registered with NameSilo, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7 and 8, 2018, GoDaddy.com, LLC; Name.com, Inc.; NameSilo, LLC confirmed by e-mail to the Forum that the <gmailbiz.com>, <gmailbeta.com>, <gogoogle.biz>, <googlelivemail.com>, <googlermail.com>, <googlermail.net>, <oogle.biz>, <androidone.biz>, <youtubein.com>, <yutube.download>, and <youtubesketches.com> domain names are registered with GoDaddy.com, LLC; Name.com, Inc.; or NameSilo, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Name.com, Inc.; and NameSilo, LLC have verified that Respondent is bound by the respective registration agreements 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 March 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@gmailbiz.com, postmaster@gmailbeta.com, postmaster@gogoogle.biz, postmaster@googlelivemail.com, postmaster@googlermail.com, postmaster@googlermail.net, postmaster@oogle.biz, postmaster@androidone.biz, postmaster@youtubein.com, postmaster@yutube.download, postmaster@youtubesketches.com. Also on March 13, 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.
A timely Response was received and determined to be complete on April 2, 2018.
On April 9, 2018, the Forum appointed Debrett G. Lyons as Panelist. That same day Complainant made additional submissions which were filed in a timely manner according to the Forum's Supplemental Rule #7. Those submissions have been taken into account by the Panel.
Having reviewed the communications records, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in GOOGLE, GMAIL, YOUTUBE, and ANDROID and alleges that the disputed domain names are confusingly similar to one or another of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
So far as pertinent to the Discussion which follows, Respondent asserts that the disputed domain names are not confusingly similar to Complainant’s trademarks.
Further, Respondent submits his right or legitimate interest in the disputed domain names because he registered and maintained the names for several years. Respondent also refers to a pending trademark application in India for YU, being a component part of one of the domain names.
Furthermore, Respondent states that he did not register or use the domain names in bad faith since the names are currently inactive and undeveloped.
C. Complainant – additional submissions
As stated, Complainant made additional submissions compliant with the Forum's Supplemental Rule #7. Those submissions are referred to as required in the Discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademarks GOOGLE, GMAIL, YOUTUBE, and ANDROID in connection with its search engine services, email service, and related products and services;
2. the trademarks are the subject of, inter alia, the following United States Patent and Trademark Office (“USPTO”) registrations:
GOOGLE (Reg. No. 2,884,502, registered Sep. 16, 1998)
GMAIL (Reg. No. 3,150,462, registered Oct. 3, 2006)
YOUTUBE (Reg. No. 3,525,802, registered Oct. 28, 2008)
ANDROID (Reg. No. 3,467,615, registered Jul. 15, 2008);
3. the disputed domain names were created on the following dates:
<googlelivemail.com> August 29, 2007
<gmailbiz.com> January 5, 2008
<youtubein.com> January 28, 2008
<googlermail.net> June 9, 2013
<googlermail.com> September 29, 2013
<gmailbeta.com> January 27, 2014
<youtubesketches.com> February 28, 2014
<androidone.biz> September 14, 2014
<yutube.download> November 5, 2017
<gogoogle.biz> November 23, 2017
<oogle.biz> November 23, 2017
4. the evidence is that competitive email and virus protection services have been offered at the <googlelivemail.com> domain name; there is no active use of the <gmailbiz.com>, <gmailbeta.com>, <gogoogle.biz>, <googlermail.com>, <googlermail.net>, <youtubein.com>, and <youtubesketches.com> domain names; and the <yutube.download>, <androidone.biz> and <oogle.biz> domain names have been used to offer competing web-hosting and other products and services;
5. Respondent has a pending trademark App. No. 2851965, filed November 28, 2014 in India for the trademark, YU; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its USPTO registrations for GOOGLE, GMAIL, YOUTUBE, and ANDROID and had so proven trademark rights in those terms.
Panel is satisfied that the disputed domain names are confusingly similar to one or another of Complainant’s trademarks. For the purpose of comparison the various gTLDs can be disregarded. The disputed domain names take one or another of Complainant’s marks — or a trivial misspelling thereof — and add one or more terms of no disctinctive value such as “biz,” “beta,” “go,” “live,” “mail,” “in,” and “sketches.” The additions and alterations do not distinguish the domain names from the trademarks in any significant way so as to avoid confusion.[i]
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Whilst Respondent contends that the disputed domain names are comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s marks, that argument has been found to be potentially relevant only to the second and third elements of the Policy.[ii] The Panel has not considered it here. For those same reasons the Panel has deferred consideration of Respondent’s Indian trademark application for YU. Finally, the Panel observes that the disputed domain name <youtubein.com> was created in January, 2008 but the corresponding trademark registration for YOUTUBE took place in October, 2008. Nevertheless, having regard to the filing date of that trademark and the extensive continuous user of the YOUTUBE mark well prior to January, 2008 there is no sustainable argument that the domain name predates the trademark so as to influence this or other aspects of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The publicly available WHOIS information identifies the registrant of the disputed domain names as either “Somasundaram Ramkumar”, “Ramkumar”, “S Ramkumar” or “Ramkumar Corporation”. Accordingly, there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any registered trademark rights, nor of any common law rights. There is no evidence that Complainant has authorized Respondent to use the trademarks and Complainant denies any such authorization.
Further, Complainant argues Respondent’s lack of rights or legitimate interests in the domain names by reason of either (i) no use at all of some of the names, or (ii) no use of some of the names in connection with a bona fide offering of goods or services, or no legitimate noncommercial or fair use (generally, in those cases there being competitive use), or (iii) an attempt to pass off the resolving website as a site owned or controlled by Complainant.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.[iv]
Respondent claims it has rights or legitimate interests in the disputed domain names since he has paid money to register and maintain the names over time. However, mere registration and maintenance of domain names does not confer rights or legitimate interests under the Policy. Further, with specific regard to the <yutube.download> domain name, Respondent claims rights by reason of the Indian trademark application for YU. The Panel notes that pending applications do not confer rights in a mark.[v] There is no evidence of use of that mark by Respondent. On the facts before it, the Panel would not consider even a registration for YU to give rights in the domain name <yutube.download> which (stripped of the gTLD) is phonetically identical to Complainant’s trademark YOUTUBE registered and used from an earlier point in time. Finally, Respondent claims that the domain names are composed of generic or descriptive terms, and that Respondent therefore has the right to register and own the names. The Panel rejects that argument and finds in each case that the registered trademark, or some obvious misspelling thereof, is the distinctive and memorable part of the domain name and is not a common term available for all to use.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and were used in bad faith.
Further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The use of the disputed domain names has been described. Where there has been actual use, present or past, the Panel finds paragraph 4(b)(iv) has been satisfied. The Panel has already found the disputed domain names to be confusingly similar to the trademarks. The Panel accepts Complainant’s assertion that Respondent uses the names to confuse and divert Internet users to its websites for commercial gain in some form or another. In those cases where there has been no use at all or the disputed domain names resolve to a construction page, the Panel finds registration in bad faith by reason of the repute of Complainant’s registered marks and use in bad faith by reason of “passive holding” and the logic first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmailbiz.com>, <gmailbeta.com>, <gogoogle.biz>, <googlelivemail.com>, <googlermail.com>, <googlermail.net>, <oogle.biz>, <androidone.biz>, <youtubein.com>, <yutube.download>, and <youtubesketches.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 19, 2018
[i] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”.
[ii] See, for example, Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) examining respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); Vitello v. Castello, FA 159460 (Forum July 1, 2003) finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii).
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[iv] See, for example, in order of relevance, Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”); Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent’s non-use of the disputed domain names demonstrated that the respondent was not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
[v] See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017)
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page