DECISION

 

Google LLC v. Lubov Nikolaenkova / Private Person

Claim Number: FA1808001801811

PARTIES

Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA.  Respondent is Lubov Nikolaenkova / Private Person (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cdn-googleservice.com>, registered with Registrar of Domain Names REG.RU LLC.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 16, 2018; the Forum received payment on August 16, 2018. The Complaint was submitted in both Russian and English.

 

On August 22, 2018, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <cdn-googleservice.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name.  Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 August 27, 2018, the Forum served the Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of September 17, 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@cdn-googleservice.com.  Also on August 27, 2018, the Russian language 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 September 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

Language of the Proceedings

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Amend. Compl. Ex. 8. Respondent’s <cdn-googleservice.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the GOOGLE mark before appending the letters “cdn,” a hyphen, the generic term “service,” and the “.com” generic top-level-domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <cdn-googleservice.com> domain name. Respondent is not commonly known by the disputed domain name, 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 attempts to pass off as Complainant and offers malicious software downloads on the resolving website.

3.    Respondent registered and uses the <cdn-googleservice.com> domain name in bad faith. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own website. Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the disputed domain name.

 

B. Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <cdn-googleservice.com> domain name is confusingly similar to Complainant’s GOOGLE mark.

2.    Respondent does not have any rights or legitimate interests in the

<cdn-googleservice.com> domain name.

3.    Respondent registered or used the <cdn-googleservice.com> domain name in bad faith.

 

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

Complainant asserts rights in the GOOGLE mark based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Complainant submits a schedule of its trademark registrations for the GOOGLE mark, including those with the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Amend. Compl. Ex. 8. Accordingly, the Panel finds that Complainant has established rights in the GOOGLE mark.

 

Next, Complainant argues that Respondent’s <cdn-googleservice.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the GOOGLE mark before appending the letters “cdn,” a hyphen, the generic term “service,” and the “.com” gTLD. Appending letters, a hyphen, generic terms, and gTLDs all represent insufficient changes to a complainant’s mark in an analysis for confusing similarity pursuant to Policy ¶ 4(a)(i). See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also NSK LTD. v. Xu Yan / ChangZhou City Thinker Network Technology Co., Ltd., FA 1709111 (Forum Jan. 31, 2017) (“The disputed domain name combines both of Complainant’s RHP and NSK marks, with a hyphen added between them… creating confusing similarity.”); 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).). The Panel therefore finds that the <cdn-googleservice.com> domain name is confusingly similar to the GOOGLE mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 <cdn-googleservice.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 Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Lubov Nikolaenkova / Private Person” as the registrant.  See Amend. Compl. Ex. 4. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the GOOGLE mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA 1505001620789 (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 disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <cdn-googleservice.com> domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant contends Respondent fails to use the disputed domain name in connection with neither a bona fide offer per Policy ¶ 4(c)(i) nor a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii) as Respondent offers malicious software downloads from the disputed domain name. Use of a disputed domain name to distribute malicious software downloads may represent a lack of use in conjunction with Policy ¶¶ 4(c)(i) or (iii). 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 provides screenshot evidence of the disputed domain name’s attempt to download malicious software on unsuspecting Internet users’ computers. See Amend. Compl. Ex. 9. The Panel agrees with Complainant and find Respondent lacks rights and legitimate interests in the <cdn-googleservice.com> domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Next, Complainant argues Respondent fails to use the disputed domain name in connection with neither a bona fide offer per Policy ¶ 4(c)(i) nor a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii) as Respondent attempts to pass off as Complainant. Passing off as a complainant can substantiate a finding that a respondent lacks rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant asserts that Respondent’s passing off behavior is evident due to the disputed domain name containing Complainant’s famous GOOGLE mark. The Panel thus finds further evidence that Respondent lacks rights and legitimate interests in the <cdn-googleservice.com> domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and uses the <cdn-googleservice.com> domain name in bad faith as Respondent offers malicious software for Respondent’s presumed commercial gain. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Use of a disputed domain name to offer malicious software can represent bad faith pursuant to Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices.  The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Complainant submits screenshot evidence of third-party reports regarding the disputed domain name in which six different parties denoted Respondent’s website as malicious or delivering malicious software. See Amend. Compl. Ex. 9. The Panel agrees with Complainant and finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Last, Complainant claims that Respondent had actual notice or constructive knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the <cdn-googleservice.com> domain name. The Panel disregards arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge; however, actual knowledge is sufficient for a finding of bad faith pursuant to Policy ¶ 4(a)(iii). 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."); see also 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). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the disputed domain name based upon the fame and unique qualities of the GOOGLE mark, which were adopted by Complainant prior to the registration of the <cdn-googleservice.com> domain name. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

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 <cdn-googleservice.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  October 3, 2018