Google LLC v. Jackson Herrera / DREAMSOFT PERU S.A.C. GRUPODSP.COM
Claim Number: FA1810001811854
Complainant is Google LLC (“Complainant”), represented by Brendan J. Hughes of Cooley LLP, District of Columbia, USA. Respondent is Jackson Herrera / DREAMSOFT PERU S.A.C. GRUPODSP.COM (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2018; the Forum received payment on October 15, 2018.
On October 17, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.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 October 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@googlempresas.com, postmaster@googleamarillas.com, postmaster@amarillasgoogle.com. Also on October 22, 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 November 15, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names.
3. Respondent registered and uses the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names in bad faith.
B. Respondent failed to submit a response.
Complainant holds a registration for its well-known GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,844,502, registered Sept. 4, 2004).
Respondent registered the disputed domain names on:
|
Disputed Domain Name |
Registration Date |
|
<googlempresas.com> |
March 11, 2011 |
|
<googleamarillas.com> |
March 12, 2013 |
|
<amarillasgoogle.com> |
October 8, 2012 |
Respondent uses the disputed domain names to pass off as Complainant and to offer competing search services.
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 Panel finds that Complainant has established rights in the GOOGLE mark based upon registration with the USPTO, as well as other trademark authorities. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names incorporate the GOOGLE mark, and add generic terms and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); 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 therefore finds that Respondent’s <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names. 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. The WHOIS identifies “Jackson Herrera / DREAMSOFT PERU S.A.C. GRUPODSP.COM” as the registrant. The Panel therefore finds that Respondent is not commonly known by the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names under Policy ¶ 4(c)(ii). 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); see also 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 argues that Respondent fails to use the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use. Complainant provides screenshot evidence of the resolving websites for the disputed domain names, showing that Respondent purports to be Complainant and provides search engine ranking services for Complainant’s products. The Panel finds that Respondent fails to use the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(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.”).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
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 of the mark, and Respondent’s use of the mark to pass off as Complainant and sell services related to Complainant’s business. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under 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.”).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlempresas.com>, <googleamarillas.com>, and <amarillasgoogle.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 16, 2018
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