Google LLC v. Trinh Xuan Nghia
Claim Number: FA1812001822338
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Trinh Xuan Nghia (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neststore.net>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 December 21, 2018; the Forum received payment on December 21, 2018.
On December 27, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <neststore.net> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 December 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@neststore.net. Also on December 31, 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 January 25, 2019, 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The language of the registration agreement is Japanese. Complainant has alleged that Respondent is conversant and proficient in English and the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Pursuant to Rule 11(a), after considering the circumstances of the case, the Panel determines that the remainder of the proceedings may be conducted in English
A. Complainant
Complainant, Google LLC, uses the NEST mark in connection with hardware, software, and related services geared towards delivering home energy, safety, and security solutions. Complainant has rights in the NEST mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,357,817, registered June 13, 2000). Respondent’s <neststore.net> domain name is confusingly similar to Complainant’s mark because Respondent includes the NEST mark in its entirety in the domain name, adds the generic term “store,” and adds the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <neststore.net> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users and pass itself off as Complainant in furtherance of a fraudulent scheme and sell unrelated goods.
Respondent registered and uses the <neststore.net> domain name in bad faith. Respondent engages in a pattern of bad faith registration. Additionally, Respondent attempts to pass itself off as Complainant in connection with fraud. Further, Respondent had actual knowledge of Complainant’s rights in the NEST mark prior to registering 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 <neststore.net> 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 has rights in the NEST mark based upon its registration of the mark with the USPTO. Registration with the USPTO establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides printouts of its USPTO registrations for the NEST mark (e.g., Reg. No. 2,357,817, registered June 13, 2000). The Panel finds that Complainant has rights in the NEST mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <neststore.net> domain name is confusingly similar to Complainant’s mark because Respondent wholly incorporates the NEST mark in the domain name and adds a generic term and a gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Here, Respondent includes Complainant’s mark in its entirety in the domain name, adds the generic term “store,” and adds the “.net” gTLD. The Panel finds that Respondent’s <neststore.net> domain name is confusingly similar to Complainant’s NEST mark under 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 lacks rights and legitimate interests in the <neststore.net> domain name because Respondent is not authorized or permitted to use Complainant’s NEST mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 the at-issue domain name.”). The WHOIS of record identifies Respondent as “Trinh Xuan Nghia,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. The Panel finds that Respondent lacks rights and legitimate interests in respect of the <neststore.net> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <neststore.net> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to divert users for commercial gain. Such use may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Here, Complainant claims that the disputed domain name’s resolving website features listings for products with links to other webpages displaying price information. The Panel finds that Respondent fails to use the <neststore.net> domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant argues that Respondent fails to use the <neststore.net> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to pass itself off as Complainant in furtherance of fraud. Use of a disputed domain name in connection with fraud may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant claims that the disputed domain name’s resolving website features Complainant’s mark along with fields in which users may enter personal information. The Panel finds Respondent fails to use the <neststore.net> domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent has engaged in a pattern of bad faith registration and use based on Respondent’s registration of multiple domain names infringing on other famous marks. Registration of other multiple infringing domain names may establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Here, Complainant provides Whois information identifying Respondent as the registrant of domain names infringing on famous marks such as Facebook, Apple, and Android. The Panel finds that Respondent demonstrates a pattern of bad faith, and thus registered and uses the <neststore.net> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the NEST mark prior to registering the <neststore.net> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by evidence of the fame of the mark and the respondent’s use of it. 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 and in competition with Complainant.”). Here, Complainant provides screenshots from its website showcasing the product associated with the NEST mark. Complainant also cites Respondent’s inclusion of Complainant’s branding at the disputed domain name’s resolving webpage. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the NEST mark, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <neststore.net> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of fraud. Such use may evince bad faith under Policy ¶ 4(a)(iii). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds that Respondent registered and uses the <neststore.net> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the NEST mark prior to registering the <neststore.net> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by evidence of the fame of the mark and the respondent’s use of it. 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 and in competition with Complainant.”). Here, Complainant provides screenshots from its website showcasing the product associated with the NEST mark. Complainant also cites Respondent’s inclusion of Complainant’s branding at the disputed domain name’s resolving webpage. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the NEST mark, thereby supporting a finding of 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 <neststore.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 1, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page