Google LLC v. Lim Liang Le / AdGoogle Media
Claim Number: FA1807001796913
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Lim Liang Le / AdGoogle Media (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adgooglemedia.com> and <googledatalisting.com>, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2018; the Forum received payment on July 16, 2018.
On July 18, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adgooglemedia.com> and <googledatalisting.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@adgooglemedia.com and postmaster@googledatalisting.com. Also on July 23, 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 August 14, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a Delaware limited liability company that operates one of the world’s largest and most highly recognized search engines in the world. Complainant has rights in the GOOGLE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Compl. Annex 9. Respondent’s <adgooglemedia.com> and <googledatalisting.com> domain names are confusingly similar to Complainant’s mark because Respondent includes the entire GOOGLE mark in the disputed domain names plus the descriptive non-distinctive terms “ad,” “media,” “data,” and “listing,” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <adgooglemedia.com> and <googledatalisting.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the GOOGLE mark in any way. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to divert internet users to a webpage that offers services that directly compete with Complainant’s business.
Respondent registered and uses the <adgooglemedia.com> and <googledatalisting.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where Respondent advertises competing services. Additionally, Respondent uses the confusingly similar domain names to pass off as Complainant. Furthermore, due to the fame and notoriety of the GOOGLE mark, Respondent registered the disputed domain names with actual and constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates one of the world’s largest and most highly recognized search engines in the world.
2. Complainant has established its trademark rights in the GOOGLE mark based upon its 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. Respondent registered the <adgooglemedia.com> domain name on February 18, 2016 and the <googledatalisting.com> domain name on January 9, 2017.
4. Respondent uses the disputed domain names to divert internet users to a webpage that offers services that directly compete with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GOOGLE mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). 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)). Complainant provides a copy of its registration of the mark from the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Compl. Annex 9. Therefore, the Panel concludes that Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent’s <adgooglemedia.com> and <googledatalisting.com> domain names are confusingly similar to Complainant’s mark because Respondent incorporates the entire GOOGLE mark in the disputed domain names plus descriptive and/or generic terms and a gTLD. The addition of a descriptive or generic term, and a gTLD to a mark may not be sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). Here, Respondent includes the entire GOOGLE mark in the disputed domain names plus descriptive non-distinctive words “ad,” “media,” “data,” and “listing,” along with the “.com” gTLD. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
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 trademark and to use it in its domain names, adding the generic words referred to above that do not negate confusing similarity with Complainant’s trademark;
(b) Respondent registered the <adgooglemedia.com> domain name on February 18, 2016 and the <googledatalisting.com> domain name on January 9, 2017;
(c) Respondent uses the disputed domain names to divert internet users to a webpage that offers services that directly compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify the registrant of a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from Complainant to use its mark may be further evidence that a Respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides the WHOIS information which identifies the Respondent as “Liam Liang Le / AdGoogle Media” and nothing of the record indicates that Respondent is authorized to use Complainant’s mark in any way. See Compl. Annex 4. While the Panel notes that due to the identification of Respondent by a description including “AdGoogle Media” the Respondent may be commonly known by the disputed domain name, Respondent has not provided affirmative evidence to support the WHOIS information. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <adgooglemedia.com> and <googledatalisting.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant contends that Respondent uses the disputed domain names to divert internet users to Respondent’s webpage and offer competing goods and services. Use of a domain name to redirect internet users to Respondent’s webpage where it offers competing goods and services may not be considered a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See 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).”). Complainant provides screenshots of the webpage associated with the <adgooglemedia.com> domain name which show Respondent offering internet advertising, web hosting, web development, search engine optimization services, and related services. See Compl. Annex 11. Furthermore, Complainant provides screenshots of the webpages associated with the <googledatalisting.com> domain name which show Respondent offering online advertisement services for businesses and ad-listing search and promotional services. See Compl. Annex 13. Accordingly, the Panel concludes that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends that Respondent fails to use the <adgooglemedia.com> and <googledatalisting.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant also contends that Respondent uses the disputed domain names to pass itself off as Complainant. Use of a domain name to pass off as complainant may not be considered a bona fide offering of goods and services or a legitimate or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the webpages associated with the disputed domain names which show Respondent prominently displaying the GOOGLE mark as well as multiple photographs related to Complainant’s business. See Compl. Annexes 11 and 13. Complainant submits that the disputed domain names’ resolving website mimics the Complainant’s color scheme and prominently displays the GOOGLE mark. Id. Therefore the Panel finds that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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.
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 registration of the <adgooglemedia.com> and <googledatalisting.com> domain names indicates that Respondent engaged in a pattern of bad faith registration. Specifically, Complainant contends Respondent’s bad faith is evidenced by the registration of multiple infringing domain names. A respondent may be found to be acting in bad faith where it registers multiple infringing domain names under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Respondent registered both <adgooglemedia.com> and <googledatalisting.com> domain names. See Compl. Annex 4. Therefore, the Panel concludes that Respondent had engaged in a pattern of bad faith registration and thus registered and used the disputed domain names in bad faith according to Policy ¶ 4(c)(ii).
Secondly, Complainant argues that Respondent registered and uses the <adgooglemedia.com> and <googledatalisting.com> domain names in bad faith. Specifically Complainant alleges that Respondent uses the disputed domain names to disrupt Complainant’s business by promoting Respondent’s competing business. Use of a domain name to disrupt a complainant’s business in furtherance of promoting the respondent’s competing business may be evidence of bad faith under Policy ¶¶ 4(iii) and (iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Here, Complainant provides screenshots of the webpage associated with the <adgooglemedia.com> domain name which show Respondent offering internet advertising, web hosting, web development, search engine optimization services, and related services. See Compl. Annex 11. Furthermore, Complainant provides screenshots of the webpages associated with the <googledatalisting.com> domain name which show Respondent offering online advertisement services for businesses and ad-listing search and promotional services. See Compl. Annex 13. Accordingly, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant submits that Respondent registered and uses the <adgooglemedia.com> and <googledatalisting.com> domain names to create a false association between Respondent and Complainant. Use of a domain name by a respondent to pass itself off as complainant may support a finding of bad faith and registration under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of the webpages associated with the disputed domain names which show Respondent appropriating the GOOGLE mark and offering services that compete directly with those offered by Complainant. See Compl. Annexes 11 and 13. Consequently, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names. Arguments of bad faith based on constructive notice generally do not succeed in view of prior UDRP decisions. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately 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 due to the famous and distinctive nature of the GOOGLE mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names. To support this argument, Complainant submits a Google Doc listing multiple awards Complainant has won regarding the operation of its business on a worldwide scale. See Compl. Annex 8. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the disputed domain names under Policy ¶ 4(a)(iii).
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 mark and in view of the conduct that Respondent has engaged in when using the disputed 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adgooglemedia.com> and <googledatalisting.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 16, 2018
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