Google LLC v. Bryan Stone
Claim Number: FA1810001811840
Complainant is Google LLC (“Complainant”), represented by Brendan J. Hughes of Cooley LLP, District of Columbia, USA. Respondent is Bryan Stone (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlelooks.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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2018; the Forum received payment on October 15, 2018.
On October 16, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlelooks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@googlelooks.com. Also on October 19, 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.
A timely response was received and completed on Nov. 8, 2018
On November 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Non-conforming Response
A Response was received on Nov. 8, 2018, however Respondent failed to fill out the necessary information required for the Response to be complete. Thus, the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel has considered the Respondent’s Response in deliberating this Decision.
A. Complainant
- Complainant, Google LLC, was founded in 1997 and its search engine has become one of the most highly recognized and widely used internet search services in the world. Complainant owns hundreds of domain names, including its primary <google.com> domain name. Its famous GOOGLE trademark was ranked, by Brand Finance Global 500 in 2017 to be the most valuable brand in the world.
- The disputed domain name, <googlelooks.com>, is confusingly similar to Complainant's GOOGLE mark, whose trademark registration predates the registration of the name. The disputed domain name incorporates the Complainant’s mark in full. The addition of the non-distinctive, generic term "looks" does not negate a finding of confusing similarity between the disputed domain name and the mark. On the contrary, the added term will cause internet users to falsely associate the disputed domain name with the Complainant's mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized by the Complainant to use the GOOGLE mark in any way. Respondent is not commonly known by the disputed domain name.
- Respondent attempts to pass himself off as Complainant by placement of a modified version of Complainant's stylized GOOGLE trademark on the website to which the disputed domain name resolves. Moreover, that website offers professional photography and marketing services for small businesses, with the suggestion that those services will be helpful in increasing placements on the GOOGLE search engine. This use of the disputed domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Additionally, Respondent failed to respond to Complainant’s cease and desist letters.
- Respondent registered and is using the disputed domain name in bad faith. Respondent's use of the disputed domain name in connection with a modified, stylized GOOGLE mark, and to suggest improved placement on Complainant's search engine, suggests that Respondent was well aware of Complainant's rights in the mark prior to registration of the disputed domain name. Furthermore, the immense worldwide fame of Complainant's GOOGLE trademark by itself confirms that the disputed domain name was registered and is being used in bad faith.
B. Respondent
- Respondent filed a Response form but failed to assert anything or reply to any of Complainant's contentions.
The Complainant is a well-known American company that operates the most widely used internet search engine in the world. The Complainant conducts business under its GOOGLE trademark, which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075; registered Jan. 20, 2004).
The disputed domain name, <googlelooks.com>, is registered by the Respondent, who registered the name on June 6, 2014. The disputed domain name resolves to a website that features a logo that resembles a stylized version of Complainant's GOOGLE mark and offers professional photography and marketing services for small businesses, with a suggestion that those services can increase placements on Complainant's internet search engine.
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 that addresses any of the contentions set forth in the Complaint, the Panel will 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 will 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 Complainant has provided the Panel with ample evidence that the Complainant owns the GOOGLE trademark, including evidence of valid registrations of the mark with the USPTO. See Haas Automation, Inc. v. Fraser, FA 1627211 (Forum Aug. 4, 2015) ("The Panel finds that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)."); see also Google, Inc. v. Whois Privacy LLC, FA 1278684 (Forum Sept. 23, 2009) ("The Panel finds that Complainant has established rights in the GOOGLE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.").
It is clear to the Panel that the disputed domain name, <googlelooks.com>, is not identical to the GOOGLE trademark. However, it appears to the Panel that the disputed domain name is confusingly similar to the mark because the first term in the name, "google," is exactly the same as the mark. The addition of the descriptive, generic word "looks" fails to alleviate the confusion between the disputed domain name and the Complainant’s mark, as a reasonable internet user would assume erroneously that the two are associated with each other. Finally, the inclusion of the gTLD, ".com," is not relevant to the finding by the Panel that the disputed domain name is confusingly similar to Complainant's trademark. See Google, Inc. v. Star Co. Ltd., FA 1245134 (Forum Mar. 25, 2009) (finding <googlewows.com> to be confusingly similar to the GOOGLE trademark); see also Global Business Network, Inc. v. Pinda, D2006-0101 (WIPO Mar. 15, 2006) ("The Panel therefore concludes that the disputed Domain Name <gbnlook.com> is confusingly similar to the Complainant’s GBN mark.").
Accordingly, the Panel finds that Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Complainant has established to the Panel's satisfaction that the disputed domain name is confusingly similar to the Complainant's trademark and contended clearly, without contradiction, that it has not licensed or authorized Respondent to use that mark for any purpose. Therefore, Complainant has put forth a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is then incumbent upon Respondent to produce pertinent evidence that is does possess those rights or interests. See Neal & Massey Holdings Ltd v. 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”); see also .Advanced Intern'l Marketing Corp v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Although the Respondent has failed to file a coherent Response to challenge the Complainant's prima facie case, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). In doing so, the Panel will accept Complainant's uncontested assertion, supported by evidence in the form of a website printout, that the disputed domain name resolves to a website in which Respondent attempts to pass himself off as Complainant by displaying a logo that mimics a stylized version of the GOOGLE trademark. Moreover, Complainant contends that the website offers professional photography and marketing services for small businesses, with the lure that those services may assist those businesses in gaining increased placements within Complainant's internet search engine listings. The Panel concludes that disguising oneself as Complainant to furnish services that overlap with those of Complainant does not constitute a "bona fide offering of goods and services" per Policy ¶ 4(c)(i).
With respect to Policy ¶ 4(c)(ii), the Panel determines that there is no reason to believe that Respondent, Bryan Stone, or any company he might own, is commonly known as "Googlelooks." As a result, the Panel concludes that that paragraph is also inapplicable.
Finally, given the use to which the disputed domain name is put as described above, which is certainly designed to render revenue to Respondent, the Panel believes that Policy ¶ 4(c)(iii) does not apply as well, since that use is obviously not "a legitimate noncommercial or fair use, without intent for commercial gain." See Ripple Labs Inc. v. McKoy, FA 1790949 (Forum July 9, 2018) (“Use of a disputed domain name to pass off and/or offer competing goods or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).”); see also See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because Respondent in this case is also attempting to pass itself off as Complainant, presumably for financial gain, the Panel finds Respondent is not using the [disputed] domain name for 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).”).
Accordingly, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that its GOOGLE trademark is so famous internationally that any attempt by someone with no affiliation with, nor license from, Complainant to use a domain name which is confusingly similar to that mark must have been done in opportunistic bad faith. The Panel does agree that Complainant's mark is one of the most famous in the world. Ergo, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith. See Google Inc. v. Maluk, FA 1725065 (Forum May 15, 2017) (“...Complainant’s trademark GOOGLE is famous. It is difficult to envisage any use of the disputed domain name that would not violate the Policy.”); see also Google Inc. v. altun, FA 1703919 (Forum Jan. 4, 2017) (“GOOGLE is a famous, worldwide mark and an inherently distinctive mark.”); see also Accor, SoLuxury HMC v. Lan, D2016-1242 (WIPO Aug. 22, 2016) (“Where a domain name is so obviously connected with a well-known trademark, its very use by someone with no connection to the trademark suggests opportunistic bad faith.”).
Furthermore, the Panel is convinced that the Respondent, who is attempting to disguise himself as the Complainant in connection with the services offered on the website that is attached to the disputed domain name, seeks intentionally to gain commercially through this deception and the likelihood of confusion between the name and Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website. This places Respondent's actions squarely within the circumstance delineated under Policy ¶ 4(b)(iv) with respect to bad faith registration and use of the disputed domain name. See Google LLC v. Le, FA 1796913 (Forum Aug. 16, 2018) (“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 also Google LLC v. Rao, FA 1779544 (Forum May 8, 2018 ).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlelooks.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: November 23, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page