DECISION

 

Google LLC v. Hai Min Xu / Xu Hai Min / haimin xu

Claim Number: FA1803001779597

PARTIES

Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States of America.  Respondent is Hai Min Xu / Xu Hai Min / haimin xu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <opensourcegoogle.com> and <googleplex.co>, registered with Dynadot, LLC; and Chengdu West Dimension Digital Technology Co., Ltd., respectively.

 

PANEL

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 Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 29, 2018; the Forum received payment on March 29, 2018.

 

On April1, 2018, Dynadot, LLC and Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <opensourcegoogle.com> and <googleplex.co> domain names are registered with Dynadot, LLC and Chengdu West Dimension Digital Technology Co., Ltd., respectively, and that Respondent is the current registrant of the names.  Dynadot, LLC and Chengdu West Dimension Digital Technology Co., Ltd. have verified that Respondent is bound by the relevant Dynadot, LLC and Chengdu West Dimension Digital Technology Co., Ltd. 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 April 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@opensourcegoogle.com, postmaster@googleplex.co.  Also on April 10, 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 May 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that in this case, the listed registrant names differ only by word order (which is explained by the varying practices in different cultures as to whether one’s family name is presented at the beginning or end of the name), and by the insertion of a space between “hai” and “min.” Moreover, panels have concluded that factors such as similarities in domain name servers, IP addresses, IP locations and WHOIS records support a finding that multiple domain names are under common control. See Google Inc. v. Fundacion Private Whois / Domain Administrator, FA1470887 (Forum June 5, 2013) (finding evidence supported finding of common control where disputed domains had similar domain name servers (NS3.WAPSYST.BIZ and NS4.WAPSYST.BIZ), the same IP address and the same ISP geolocation); see also Emerson Electric Co. v. xiaoqiang su / su xiaoqiang / xiaoqiangsu, FA1756928 (Forum Dec. 7, 2017) (finding that similarity of email addresses and telephone numbers in Whois records, along with registration of domains under similar names, i.e., xiaoqiang su / su xiaoqiang / xiaoqiangsu, provided evidence of registration by the same person).

 

Here, the domain names have similar IP addresses (185.53.179.7 and 185.53.179.8), as well as the same IP location (Bayern – Munich – Team Internet Ag), ASN name (AS61969TEAMINTERNET-AS, DE) and name servers (ns1.parkingcrew.net and ns2.parkingcrew.net). Also, the Whois records list virtually identical registrant names for each domain (Hai Min Xu /haimin xu), similar street addresses (Jiang Su Sheng Wu Xi Shi Jian Yin Shi xiangzhanghuayuan 2-3-106 / xiangzhanghuayuan 2-3-106), and the fax number associated with opensourcegoogle.com (+86.13588744400) is identical to the phone number associated with googleplex.co (+86.13588744400). Based on the foregoing, Complainant requests the Panel to find that the Domain Names are under common control by the same person and/or entity.

                                          

Having regard to those principles and the evidence, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

Complainant, Google LLC, offers a wide range of Internet-related products and services, including cloud services, a social networking platform, automated online language translation services, mapping services, Internet browsers software, open source software initiatives and online advertising services. Complainant uses its GOOGLE trademark 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). See Compl. Annex 14. Complainant also has common law rights in the GOOGLE OPEN SOURCE mark. Respondent’s <opensourcegoogle.com> is confusingly similar to Complainant’s GOOGLE OPEN SOURCE mark because it merely changes the order of the terms in the mark and appends the generic top-level domain (“gTLD”) “.com.” Additionally, Respondent’s <googleplex.co> domain name is confusingly similar to Complainant’s GOOGLE mark because it merely adds the generic term “plex” and the gTLD “.com” to the fully incorporated mark.

 

Respondent does not have rights or legitimate interests in the <opensourcegoogle.com> or <googleplex.co> domain names. Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE or GOOGLE OPEN SOURCE marks in any fashion. Respondent is also not commonly known by the disputed domain names as the WHOIS information of record lists “Hai Min Xu / Xu Hai Min / haimin xu” as the registrant. See Compl. Annex 4. Respondent is not using the <opensourcegoogle.com> and <googleplex.co> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to parked webpages featuring hyperlinks that compete with Complainant’s business. Additionally, Respondent has used the <googleplex.co> domain name to resolve to a site that distributes malicious software onto Internet users’ computers. Finally, Respondent has made general offers to sell the domain names to the public.

 

Respondent registered and is using the <opensourcegoogle.com> and <googleplex.co> domain names in bad faith. Respondent offers to sell the domain name to the public. Additionally, Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Further, Respondent has used the <googleplex.co> domain name to distribute malicious software. Respondent’s registration of the <opensourcegoogle.com> domain name on the same day Complainant announced the launch of its GOOGLE OPEN SOURCE website indicates opportunistic bad faith. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the GOOGLE and GOOGLE OPEN SOURCE marks.

 

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a prominent United States company that offers a wide range of Internet-related products and services.

2.    Complainant has established its trademark rights in the GOOGLE mark by the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004).

3.    Complainant also has established its common law trademark rights in the GOOGLE OPEN SOURCE mark.

4.    Respondent registered the <opensourcegoogle.com> domain name on   December 22, 2017 and the <googleplex.co> domain name on March 28, 2017.

5.    Respondent has used the domain names to resolve to parked webpages featuring hyperlinks that compete with Complainant’s business and has used the <googleplex.co> domain name to resolve to a site that distributes malicious software onto Internet users’ computers.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends it established rights in its GOOGLE mark through registration with the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). See Compl. Annex 14. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). As such, the Panel finds that Complainant established rights in the GOOGLE mark under Policy ¶ 4(a)(i).

 

Additionally, Complainant submits it has common law rights in its GOOGLE OPEN SOURCE mark. Common law rights are sufficient to establish rights in a 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 such as longstanding use, evidence of an identical domain name, 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 provides representative news articles and a press release concerning Complainant’s launch of the <opensource.google.com> website as evidence of its ownership of an identical domain name and media recognition of the mark. See Compl. Annex 11, 13. Accordingly, The Panel therefore holds that Complainant has established common law rights in its GOOGLE OPEN SOURCE mark pursuant to Policy ¶ 4(a)(i).

 

The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s GOOGLE OPEN SOURCE and GOOGLE marks. Complainant argues that Respondent’s <opensourcegoogle.com> domain name is confusingly similar to Complainant’s GOOGLE OPEN SOURCE mark because it merely changes the order of the terms in the mark and appends the gTLD “.com.” Inverting the words in a mark and adding a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i).); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel holds that Respondent’s <opensourcegoogle.com> domain name is confusingly similar to Complainant’s GOOGLE OPEN SOURCE mark.

 

Additionally, Complainant claims that Respondent’s <googleplex.co> domain name is confusingly similar to Complainant’s GOOGLE mark because it merely adds the generic term “plex” and the gTLD “.com” to the fully incorporated mark. The addition of a generic term and gTLD do not negate confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Respondent’s <googleplex.co> domain name is confusingly similar to Complainant’s GOOGLE mark.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a)  Respondent has chosen to take Complainant’s GOOGLE OPEN SOURCE  and GOOGLE marks and to use them in its domain names, incorporating the former of the marks in the <opensourcegoogle.com>   domain name, reversing the word order and the latter of the marks in the <googleplex.co>  domain name , adding the generic word “plex”;

(b)  Respondent registered the disputed domain names on the following dates: the <opensourcegoogle.com> domain name on   December 22, 2017 and the <googleplex.co> domain name on March 28, 2017;

(c)  Each of the domain names resolves to a parked website which contains links to third-party businesses offering services that compete with Complainant’s services;

(d)  Respondent engaged in the aforementioned activities without the permission or authority of Complainant;

(e)  Complainant submits that Respondent is not commonly known by the domain names and has not licensed or otherwise authorized Respondent to use its GOOGLE OPEN SOURCE or GOOGLE marks 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 may be 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, 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 the <opensourcegoogle.com> and <googleplex.co> domain names lists “Hai Min Xu / Xu Hai Min / haimin xu” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <opensourcegoogle.com> or <googleplex.co> domain names;

(f)    Respondent is not using the <opensourcegoogle.com> and <googleplex.co> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant submits that Respondent uses the domain names to resolve to parked webpages featuring hyperlinks that compete with Complainant’s business. Use of a domain name to resolve to a website featuring competing hyperlinks may not be considered a bona fide offering or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Complainant provided screenshots of the disputed domain names’ resolving websites which indicate that the sites feature hyperlinks such as “Free Source,” “Open Source,” and “Advertising on Google.” See Compl. Annexes 15–16. Therefore, the Panel finds that Respondent is using the domain names to resolve to websites featuring competing hyperlinks and holds that Respondent failed to use the domain names for a bona fide offering or fair use;

(g)   Complainant submits that Respondent has used the <googleplex.co> domain name to resolve to a site that distributes malicious software onto Internet users’ computers. Use of a domain name to distribute malicious software may not be considered a bona fide offering or fair use. 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 provided screenshots of the website resolving from the <googleplex.co> domain name which indicate that the site contains malicious software that is downloaded when Internet users click a “continue” button. See Compl. p. 8. The Panel agrees that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name;

(h)  Complainant submits that Respondent has made general offers to sell the <opensourcegoogle.com> domain name to the public. General offers to sell a domain name may evidence a lack or rights or legitimate interests in a domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant contends that screenshots of the <opensourcegoogle.com> website show that the site displays a message that the domain name is for sale. See Compl. Annex 16. As such, the Panel finds that Respondent does not have rights and legitimate interests in the domain name.

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant submits that Respondent’s offer to sell the domain names indicates the domain names were registered and are being used in bad faith. A general offer to sell a domain name to the public can indicate a respondent’s bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant specifically submits that each domain name resolves to a website which offers the domain names for sale. See Compl. Annex 16. The Panel agrees this demonstrates Respondent’s bad faith per Policy ¶ 4(b)(i).

 

Secondly, Complainant claims Respondent registered and is using the <opensourcegoogle.com> and <googleplex.co> domain names in bad faith by creating confusion with Complainant’s marks for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein may constitute bad faith. See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Complainant submits that Respondent uses the domain names to attract Internet users and profit from Internet users clicking on competing pay-per-click hyperlinks. See Compl. Annexes 15–16. Accordingly, the Panel finds that Respondent attempted to create confusion with Complainant’s GOOGLE or GOOGLE OPEN SOURCE marks and holds that Respondent registered and used the domain names in bad faith.

 

Thirdly, Complainant argues that Respondent has used the <googleplex.co> domain name to distribute malicious software. Use of a domain name to distribute malware may evidence bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As mentioned previously, Complainant provided screenshots showing that the <googleplex.co> domain name resolves to a website that distributes malware onto Internet users’ computers. See Compl. p. 8. Therefore, the Panel finds that Respondent used the domain name to facilitate the download of malicious software and holds that Respondent used the domain name in bad faith under Policy ¶ 4(a)(iii).

 

Fourthly, Complainant argues that the <opensourcegoogle.com> domain name was registered opportunistically in bad faith. Where a domain name is registered immediately as a result of a relevant public announcement, opportunistic bad faith registration can be inferred. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website); see also Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week). Complainant submits that Respondent registered the domain name the same day Complainant announced the launch of its GOOGLE OPEN SOURCE (<opensource.google.com>) domain name and website. See Compl. Annex 4 (WHOIS information for the <opensourcegoogle.com> domain name, indicating a registration date of March 17, 2018); see also Compl. Annex 13 (articles related to the launch of Complainant’s website). The Panel agrees that Respondent’s registration of the <opensourcegoogle.com> domain name was opportunistic and done in bad faith per Policy ¶ 4(a)(iii).

 

Fifthly, Complainant submits that Respondent registered the disputed domain names with full knowledge of Complainant’s rights in the GOOGLE and GOOGLE OPEN SOURCE marks. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of 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). A respondent is presumed actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s GOOGLE and GOOGLE OPEN SOURCE marks have created significant good will and consumer recognition around the world. See Compl. Annexes 9-10 (Google rankings and awards); Annexes 11-13 (Media coverage regarding <opensource.google.com>). Therefore, due to the fame of Complainant’s mark, the Pane finds that Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered and subsequently used.

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the GOOGLE OPEN SOURCE and GOOGLE marks and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <opensourcegoogle.com> and <googleplex.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  May 3, 2018

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page