Google LLC v. Chen Weilong
Claim Number: FA1811001816125
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is Chen Weilong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com>, registered with Name.Com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2018; the Forum received payment on November 12, 2018.
On November 13, 2018; November 15, 2018, Name.Com, Inc. confirmed by e-mail to the Forum that the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names are registered with Name.Com, Inc. and that Respondent is the current registrant of the names. Name.Com, Inc. has verified that Respondent is bound by the Name.Com, Inc. 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 November 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@googledownload2018.com, postmaster@googleonline2018.com, postmaster@googletrack.me, postmaster@chromedownload2018.com, postmaster@chromeonline2018.com, postmaster@newchrome2018.com. Also on November 15, 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 December 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Google LLC, owns and operates one of the most highly recognized Internet search services in the world and uses the GOOGLE and CHROME marks in connection with its business.
Complainant asserts rights in the GOOGLE and CHROME marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names are confusingly similar to Complainant’s marks because Respondent fully incorporates the marks in the at-issue domain names plus generic and/or descriptive terms.
Respondent lacks rights and legitimate interests in the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s marks in any way. Furthermore, Respondent fails to use the domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial of fair use. Instead, Respondent attempts to pass off as Complainant and download malicious software onto Internet users’ computers.
Respondent registered and uses the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names in bad faith because Respondent attempts to pass off as Complainant and download malicious software onto internet users’ computers. Furthermore, Respondent has engaged in a pattern of bad faith registration by registering multiple infringing domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOOGLE and CHROME marks.
Complainant’s rights in the GOOGLE and CHROME existed prior to Respondent’s registration of the at-issue domain name.
Respondent has used the domain names to pass itself off as Complainant to facilitate the distribution of malicious software to third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for both the GOOGLE and CHROME marks evidences Complainant’s rights in each mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com>domain names each incorporate either Complainant’s GOOGLE or CHROME mark. To each domain name Respondent adds one or more suggestive terms, and suffixes the resulting string with the top level domain name “.com.” The differences between each at-issue domain name and Complainant’s relevant trademark are insufficient to distinguish any of the domain names from its included trademark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names are each confusingly similar to one of Complainant’s trademarks 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, Google Inc v. Chen Weilong, FA1803596 (Forum Sept. 24, 2018) (finding confusing similarity where the <googlechrome2018.net> and <newchromeonline.com> domain names incorporate CHROME in its entirety).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names.
Respondent is not authorized to use Complainant’s trademarks 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 any of the domain names.
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Chen Weilong” as the at-issue domain names’ registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by any of the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> or <newchrome2018.com>domain names. The Panel thus concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent used the at-issue domain names to pass itself off as Complainant and distribute malware. Respondent’s use of the confusingly similar domain names in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain names. 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); see also, 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).”).
In light of the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith regarding each domain name pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interest, Respondent uses the at-issue domain names to pass itself off as Complainant in furtherance of a scheme to distribute malware by downloading tainted copies of Google’s CHROME web browser to unsuspecting third parties. The malevolent download process is also designed to fraudulently extract private information from those downloading infected software. Respondent, inter alia, attempts to create confusion between the domain names and Complainant’s marks for commercial gain. Per Policy ¶ 4(b)(iv), Respondent’s use of the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names to attract internet users by creating confusion as to the source, sponsorship, or endorsement of content addressed by such domain names shows that Respondent has registered and used the at-issue domain names in bad faith. See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (“Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.”). Further, Respondent’s distribution of malware also indicates Complainant’s bad faith registration and use of the confusingly similar domain names. This is true for each of the at-issue domain names, even if only a portion of such domain names actually supported malware distribution as it is apparent that the at-issue domain names were collectively registered and held/used for foul purposes.
Furthermore, in addition to registering the at-issue confusingly similar domain names Respondent previously registered three other domain names containing Complainant’s trademarks. Each was subject to a UDRP action by Complainant resulting in findings adverse to Respondent. See Google LLC v. Weilong, FA 1803596 (Forum Sept. 24, 2018) (ordering transfer of <googlechrome2018.net> and <newchromeonline.com> to Complainant) and Google LLC v. Weilong, FA 1810319 (Forum Oct. 30,2018) (ordering transfer of <newchromedownload.com> to Complainant). Respondent’s pattern of past cybersquatting suggests bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA 1622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”).
Finally, Respondent registered <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> knowing that Complainant had trademark rights in the GOOGLE and CHROME trademarks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s use of the at-issue domain names to impersonate Complainant in Respondent’s effort to distribute unauthorized and/or tainted copies of Complainant’s CHROME software. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googledownload2018.com>, <googleonline2018.com>, <googletrack.me>, <chromedownload2018.com>, <chromeonline2018.com> and <newchrome2018.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 9, 2018
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