Google LLC v. Nidhi Rao
Claim Number: FA1803001779544
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States of America. Respondent is Nidhi Rao (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-flight.org>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2018; the Forum received payment on March 29, 2018.
On Mar 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <google-flight.org> 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 April 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@google-flight.org. Also on April 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 April 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 cloud services, a social networking platform, translation services, an online flight booking search service, Internet browser software, and online advertising services. Complainant uses its GOOGLE 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. 2,806,075, registered Jan. 20, 2004). Complainant also established common law rights in its GOOGLE FLIGHTS mark. Respondent’s <google-flight.org> domain name is confusingly similar to Complainant’s GOOGLE mark because it adds a hyphen, the term “flight,” and the generic top-level domain (“gTLD”) “.org” and to Complainant’s GOOGLE FLIGHTS mark because it adds a hyphen, eliminates the letter “s” from the mark, and adds the generic top-level domain (“gTLD”) “.org”.
Respondent does not have rights or legitimate interests in the <google-flight.org> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE or GOOGLE FIGHTS marks. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Nidhi Rao” as the registrant. Respondent is not using the <google-flight.org> domain name 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 to a commercial website that features Complainant’s GOOGLE FLIGHTS mark and offers services, such as a search engine, that compete with Complainant’s Google Flights business. Respondent’s use of a disclaimer does not alleviate the misleading nature of Respondent’s use of the domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s website. Respondent is also using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Google LLC, offers a wide range of Internet-related products and services, including cloud services, a social networking platform, translation services, an online flight booking search service, Internet browser software, and online advertising services. Complainant uses its GOOGLE mark to promote its products and services and established rights in the mark through registration with the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Complainant also established common law rights in its GOOGLE FLIGHTS mark. Respondent’s <google-flight.org> domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE FLIGHTS marks.
Respondent, Nidhi Rao, registered the <google-flight.org> domain name on November 22, 2017.
Respondent does not have rights or legitimate interests in the <google-flight.org> domain name. The domain name resolves to a website that prominently displays the GOOGLE mark and Google Color Logo, as well as the GOOGLE FLIGHTS mark and Google Flights Logo, and displays large images taken from Complainant’s Google Flights website. The prominent use of Complainant’s branding and images makes Respondent’s website look as if it were legitimately owned by or affiliated with Google. Respondent uses the domain name to divert Internet users to a commercial website that features Complainant’s GOOGLE FLIGHTS mark and offers services, such as a search engine, that compete with Complainant’s Google Flights business.
Respondent registered and is using the disputed 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 rights in the GOOGLE mark under Policy ¶ 4(a)(i) through registration with the USPTO. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. 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)).
Complainant also has established common law rights in its GOOGLE FLIGHTS mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark, which may be demonstrated by evidence of longstanding use, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant has established secondary meaning in its GOOGLE FLIGHTS mark through continuous use of the mark since 2011 and extensive media recognition regarding the mark.
Respondent’s <google-flight.org> domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE FLIGHTS marks.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its GOOGLE or GOOGLE FLIGHTS marks. 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. 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 disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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 <google-flight.org> lists “Nidhi Rao” as the registrant, and Respondent does not have license or permission to use Complainant’s marks. Therefore, Respondent is not commonly known by the <google-flight.org> domain name.
Respondent is not using the <google-flight.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the domain name to divert Internet users to a commercial website that features Complainant’s GOOGLE FLIGHTS mark and offers services, such as a search engine, that compete with Complainant’s Google Flights business. Use of a domain name to mislead Internet users as to a complainant’s affiliation with the site and to offer competing products and services is not a bona fide offering or fair use under Policy ¶ 4(c)(i) and (iii). See 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).”); see also 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).”).
Respondent’s use of a disclaimer does not alleviate the misleading nature of Respondent’s use of the domain name. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Respondent registered and is using the <google-flight.org> domain name in bad faith by diverting Internet users to Respondent’s competing website and disrupting Complainant’s business. Use of a domain name to disrupt a Complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent is also using the domain name to pass off as Complainant to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion with the source, sponsorship, affiliation or endorsement may constitute bad faith use under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA 1611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent uses the domain name and its resolving website to pass off as Complainant for commercial gain by displaying Complainant’s marks and offering services in the same industry.
Respondent registered the <google-flight.org> domain name with full knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is shows 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).
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 <google-flight.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 8, 2018
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