Google LLC v. Kudos Infomedia
Claim Number: FA1804001780281
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Kudos Infomedia (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gclouddrive.com>, registered with Dynadot, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2018; the Forum received payment on April 4, 2018.
On April 4, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <gclouddrive.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@gclouddrive.com. Also on April 5, 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 30, 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, operates a search engine has become one of the most highly recognized Internet search services in the world. Complainant’s primary website is located at <google.com>, and Complainant owns and operates websites at over 180 GOOGLE formative domain names. Complainant has common law rights in the GCLOUD and GOOGLE DRIVE marks through its long-term use of the marks. Complainant has one million active, paying organizational users and was ranked among the top 25 mobile apps. In 2016, GOOGLE DRIVE had at least 47 million monthly active users and, by May 2017, GOOGLE DRIVE hosted over two trillion user files. Thus, by such long-standing use by Complainant, media coverage and consumer use and recognition, Complainant has established enforceable common law rights in the GOOGLE DRIVE and GCLOUD marks. Respondent’s <gclouddrive.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s marks, less the GOOGLE from the GOOGLE DRIVE mark, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <gclouddrive.com> domain name. Respondent is not commonly known by the disputed domain name based on the WHOIS information, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the domain name to direct users to Respondent’s own commercial website where Respondent promotes competing packages for cloud storage allegedly powered by Complainant’s cloud storage platforms. Further, the fact that the resolving website requires users to enter their email addresses in order to complete a purchase of Respondent’s purported cloud storage packages provides evidence of phishing.
Respondent registered and uses the <gclouddrive.com> domain name in bad faith. Respondent is using the Domain Name to create a likelihood of confusion with Complainant’s GOOGLE DRIVE and GCLOUD marks and to attract Internet users seeking Complainant’s services to Respondent’s competing, commercial website. Such use of the domain name disrupts Complainant’s business. Further, Respondent uses the domain name to fraudulently acquire personal information from unsuspecting users. Id. Finally, given Respondent’s use of a confusingly similar domain name and direction of that domain to a website that prominently uses Complainant’s marks, Respondent clearly registered the domain name with actual knowledge of Complainant’s trademarks.
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 <gclouddrive.com> 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 claims it hold common law rights in the GCLOUD and GOOGLE DRIVE marks and does not currently hold trademark registrations. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims it has one million active, paying organizational users and was ranked among the top 25 mobile apps. In 2016, Complainant avers that GOOGLE DRIVE had at least 47 million monthly active users and, by May 2017, GOOGLE DRIVE hosted over two trillion user files. Thus, by such long-standing use by Complainant, media coverage and consumer use and recognition, Complainant alleges it has established enforceable common law rights in the GOOGLE DRIVE and GCLOUD marks. The Panel finds, from the uncontested allegations and evidence, that Complainant does hold common law rights in the two marks listed above for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <gclouddrive.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s marks, less the GOOGLE from the GOOGLE DRIVE mark, and adds the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); 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.”). The Panel finds that the <gclouddrive.com> domain name is confusingly similar to the GCLOUD and GOOGLE DRIVE marks under 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 contends that Respondent has no rights or legitimate interests in the <gclouddrive.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Kudos Infomedia” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the GOOGLE DRIVE and GCLOUD marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel finds Respondent is not commonly known by the <gclouddrive.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is using the domain name to direct users to Respondent’s own commercial website where Respondent promotes competing packages for cloud storage allegedly powered by Complainant’s cloud storage platforms. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant generally fails to evince a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which displays the message “Get UNLIMITED Cloud Storage using Google Drive.” The Panel finds that Respondent uses the domain name to offer competing services, and does not have rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii).
Complainant’s screenshot shows that consumers are required to input their credit card information in order to complete a purchase of Respondent’s purported cloud storage packages, which provides evidence of phishing. Phishing schemes can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). The Panel finds that Respondent lacks rights and legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <gclouddrive.com> domain name in bad faith by disrupting Complainant’s business and 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. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); 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).”). As noted above, Complainant provides a screenshot of the resolving webpage, which displays the message “Get UNLIMITED Cloud Storage using Google Drive.” The Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent uses the domain name to fraudulently acquire personal information from unsuspecting users. Using a confusingly similar domain name to phish for information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As mentioned above, Complainant’s screenshot shows that consumers are required to input their credit card information. The Panel finds Respondent attempts to phish for information, and that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the GCLOUD and GOOGLE DRIVE mark at the time of registering the <gclouddrive.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can 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). Complainant contends that given Respondent’s use of a confusingly similar domain name and direction of that domain to a website that prominently uses Complainant’s marks, Respondent clearly registered the domain name with actual knowledge of Complainant’s trademarks. The Panel finds that Respondent did have actual knowledge of Complainant’s mark and registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
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 <gclouddrive.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 7, 2018
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