Google LLC v. Adam Bussell
Claim Number: FA1812001823355
Complainant is Google LLC ("Complainant"), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is Adam Bussell ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googledriveunlimited.com> and <unlimitedgdrive.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2018; the Forum received payment on December 31, 2018.
On December 31, 2018, Name.com, Inc. confirmed by email to the Forum that the <googledriveunlimited.com> and <unlimitedgdrive.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 January 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@googledriveunlimited.com, postmaster@unlimitedgdrive.com. Also on January 8, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 was founded in 1997. Complainant operates the widely used GOOGLE search engine and offers a wide range of other products and services. Complainant's GOOGLE mark is famous, ranking among the world's most valuable global brands. Complainant owns numerous trademark registrations for GOOGLE and related marks dating back to 1999 in jurisdictions throughout the world, including the United States.
Among the products and services that Complainant offers is a file storage and synchronization service that it offers under the GOOGLE DRIVE mark with an associated logo. The service has been offered continuously since April 2012 and now has approximately 1 billion users. Complainant asserts what the Panel surmises to be common law trademark rights in GOOGLE DRIVE.
Respondent registered the disputed domain names <googledriveunlimited.com> and <unlimitedgdrive.com> in November 2018. The domain names until recently were used for websites displaying numerous instances of Complainant’s GOOGLE and GOOGLE DRIVE marks and the associated logo. The websites purported to sell access to Complainant’s GOOGLE DRIVE service, but Complainant alleges that at least one of the sites instead attempted to install malware on users’ devices. Complainant contacted Respondent about this use of the <unlimitedgdrive.com> domain name on November 20, 2018. Respondent did not respond directly to Complainant’s communication, but registered the other disputed domain name, <googledriveunlimited.com>, six days later.
Complainant contends on the above grounds that the disputed domain names <googledriveunlimited.com> and <unlimitedgdrive.com> are confusingly similar to its GOOGLE and GOOGLE DRIVE marks; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Management, 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 owns trademark rights in the GOOGLE mark by virtue of its trademark registrations in many jurisdictions, and the Panel accepts that the mark has become famous. The Panel further finds that Complainant has adequately demonstrated its common law rights in the GOOGLE DRIVE mark, and that G DRIVE is a commonly recognized short-form of that mark. See Google LLC v. Kudos Infomedia, FA 1780281 (Forum May 7, 2018) (finding common law trademark rights in GCLOUD and GOOGLE DRIVE).
The disputed domain names <googledriveunlimited.com> and <unlimitedgdrive.com> incorporate Complainant's GOOGLE and GOOGLE DRIVE marks or an abbreviated form thereof, with the addition of the generic term "unlimited" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's marks. See, e.g., Verizon Trademark Services LLC v. Kevin Hurley, Polaris Mediaworks, D2018-1786 (WIPO Sept. 26, 2018) (finding <unlimitedverizon.com> confusingly similar to VERIZON); Google LLC v. Kudos Infomedia, supra (finding <gclouddrive.com> confusingly similar to GCLOUD and GOOGLE DRIVE); Google Inc. v. Patrick Babaian, FA 1060992 (Forum Oct. 1, 2007) (finding <mygoogledrive.com> confusingly similar to GOOGLE). Accordingly, the Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's marks without authorization, and until recently they were being used for websites that displayed Complainant’s marks and associated logo in a manner clearly designed to confuse users and deceive them into allowing the installation of malware. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Panasonic Corp. of North America v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1731035 (Forum June 16, 2017) (finding lack of rights or interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain names "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names incorporate Complainant’s marks and has used them in a manner obviously intended to confuse and deceive Internet users. Respondent’s conduct is indicative of bad faith registration and use under the Policy. See, e.g., Google LLC v. Kudos Infomedia, supra (finding bad faith under similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googledriveunlimited.com> and <unlimitedgdrive.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 7, 2019
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