Google LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1807001798350
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Michigan, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlehomesupport.com>, registered with Internet Domain Service BS Corp.
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 July 24, 2018; the Forum received payment on July 24, 2018.
On July 25, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <googlehomesupport.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@googlehomesupport.com. Also on July 25, 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 16, 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 the most widely used Internet search services in the world and uses the GOOGLE and GOOGLE HOME marks to provide and market its services. Complainant claims rights in the GOOGLE and GOOGLE HOME marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., GOOGLE- Reg. No. 2,884,502, registered on Sep. 14, 2004.) and the European Union Intellectual Property Office (“EUIPO”) (e.g., GOOGLE HOME- Reg. No. 1348453, registered on Nov. 10, 2016.). Respondent’s <googlehomesupport.com> is confusingly similar to the GOOGLE HOME mark as it contains the mark in its entirety, merely adding the generic term “support”, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <googlehomesupport.com> domain name. Respondent is not permitted or licensed to use Complainant’s GOOGLE and GOOGLE HOME marks and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <googlehomesupport.com> domain name to impersonate Complainant in order to phish for Internet users’ personal information.
Respondent has registered and uses the <googlehomesupport.com> domain name in bad faith. Respondent attempts to disrupt and to attract, for commercial gain, users to the disputed domain name which offers services that compete with Complainant. In addition, Respondent’s timing of registration constitutes opportunistic bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE HOME marks when it registered the disputed domain name.
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 <googlehomesupport.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 asserts rights in the GOOGLE and GOOGLE HOME marks based upon registrations with various trademark agencies. Registration of a mark with a trademark organization is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Wente Bros. v. I S / ICS INC, FA 1739664 (Forum Aug. 18, 2017) (finding the complainant’s registration of its WENTE and WENTE VINYARDS marks with the EUIPO sufficient to establish rights in the marks). Here, Complainant provides a list of all of its trademark registrations for the GOOGLE and GOOGLE HOME marks including registrations with the USPTO (e.g., GOOGLE- Reg. No. 2,884,502, registered on Sep. 14, 2004.) and the EUIPO (e.g., GOOGLE HOME- Reg. No. 1348453, registered on Nov. 10, 2016.). The Panel finds that Complainant has rights in the GOOGLE and GOOGLE HOME marks per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <googlehomesupport.com> domain name is confusingly similar to Complainant’s mark as it contains the entire GOOGLE HOME mark, and merely adds a generic term along with a gTLD. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); See also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the term “support,” and a “.com” gTLD to Complainant’s GOOGLE HOME mark. The Panel agrees with Complainant and finds that the <googlehomesupport.com> does not contain changes that would sufficiently distinguish it from the GOOGLE HOME mark per 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 argues that Respondent has no rights or legitimate interests in the <googlehomesupport.com> domain name. Specifically, Complainant contends Respondent is not licensed or permitted to use Complainant’s GOOGLE HOME mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The WHOIS information of record identifies registrant as “Domain Admin / Whois Privacy Corp.”, and there is no evidence to suggest Respondent was authorized to use the GOOGLE and GOOGLE HOME marks. The Panel finds that under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant contends that the Respondent fails to use the <googlehomesupport.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to impersonate Complainant as part of a fraudulent scheme. Use of a domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims Respondent is using the <googlehomesupport.com> domain name and an associated 1-800 telephone number to impersonate Complainant or to pass itself off as an affiliate of Complainant for Respondent’s own financial gain. In addition, Respondent’s website also discusses its services as though they were being offered directly by Complainant. The Panel finds that Respondent lacks rights and legitimate interests in respect of the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent has registered and uses the <googlehomesupport.com> domain name in bad faith. Complainant alleges Respondent is attempting to offer services that compete directly with Complainant for Respondent’s commercial gain. Use of a domain name to offer services that compete directly with a complainant constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See A Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). Complainant claims Respondent uses the <googlehomesupport.com> domain name to offer support services for Complainant’s products which compete directly with Complainant’s business. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name; likewise, opportunistic bad faith may also be proven through consideration of the circumstances surrounding the registration. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.); see also 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). Complainant asserts that given the extensive use, media coverage, and fame of Complainant’s GOOGLE and GOOGLE HOME marks, Respondent’s use of the disputed domain name to impersonate Complainant and fraudulently solicit personal information from Complainant’s customers shows that Respondent had actual knowledge of Complainant’s marks. In addition, Complainant claims Respondent registered the disputed domain name shortly after Complainant’s first registration of the GOOGLE HOME mark with a trademark agency. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE HOME marks when it opportunistically registered and subsequently used <googlehomesupport.com> and registered and uses 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 <googlehomesupport.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 18, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page