Google LLC v. nathalie denefle
Claim Number: FA1902001831627
Complainant is Google LLC (“Complainant”), represented by Jonathan S. Batchelor of Dickson Wright PLLC, Arizona, USA. Respondent is nathalie denefle (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adwordsaccounting.com>, registered with NameCheap, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2019; the Forum received payment on February 26, 2019.
On February 27, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <adwordsaccounting.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@adwordsaccounting.com. Also on February 28, 2019, 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 March 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant offers a wide range of Internet-related products and services, including Internet search and online advertising services. Complainant has rights in the ADWORDS trademark through its use of the mark since 2000 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) dating back to 2002. Respondent’s <adwordsaccounting.com> domain name, registered on September 2, 2018, is confusingly similar to Complainant’s ADWORDS mark as Respondent incorporates the mark in its entirety along with the descriptive term “accounting” and a “.com” generic top-level domain (“gTLD).
Respondent has no rights or legitimate interests in the <adwordsaccounting.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s ADWORDS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently resolves to an inactive website and Respondent also uses an email address associated with the disputed domain name to impersonate Complainant through a phishing scheme aimed at Complainant’s customers.
In light of the fame of the ADWORDS mark and Respondent’s activities with the <adwordsaccounting.com> domain name, Respondent had actual knowledge of Complainant’s rights in the mark. Further, Respondent registered and uses the <adwordsaccounting.com> domain name in bad faith where it attempts to attract, for commercial gain, users by impersonating Complainant through an email phishing scheme. Respondent also fails to actively use the disputed domain name for an active website, and this further supports an inference of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 claims rights in the ADWORDS mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the ADWORDS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <adwordsaccounting.com> domain name is confusingly similar to the ADWORDS mark, as the name incorporates the mark in its entirety along with the descriptive term “accounting” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Complainant cites to prior cases in which domain names that incorporate its mark and the word “accounting” have been found to be confusingly similar to its ADWORDS mark and asserts that the present case is no different. See, e.g., Google LLC v. Thierry Georges Anthoine Aillaud, FA 1801351 (Forum Dec. 3, 2018) (finding the <adwords-accounting.com> domain name confusingly similar to Complainant’s ADWORDS mark); The Panel therefore determines the <adwordsaccounting.com> domain name is confusingly similar to the ADWORDS mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 has no rights or legitimate interests in the <adwordsaccounting.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ADWORDS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “nathalie denefle,” and no information on the record indicates Respondent is known otherwise or is authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <adwordsaccounting.com> domain name.
Complainant also asserts that Respondent’s inactive holding of the <adwordsaccounting.com> domain name indicates that it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant submits evidence that Respondent’s domain name does not resolve to an active webpage and that it has not done so since its registration over six months ago. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant contends that Respondent uses an email account associated with the <adwordsaccounting.com> domain name to pass itself off as Complainant in furtherance of a phishing scheme. Use of an email address to pass oneself off and improperly obtain users’ funds or sensitive information may demonstrate a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Complainant provides copies of email correspondence from the address, <collections@adwordsaccounting.com>, which requests users to submit payments to supposedly new bank details. Complainant has received a report that at least one of its customers has sent a significant sum of money to the bank account listed in the phishing email under the disputed domain name. Therefore, and in the absence of any response or other submission from the Respondent explaining these actions, the Panel agrees with Complainant and finds that Respondent has failed to use the disputed domain name for a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that in light of the fame and notoriety of its ADWORDS trademark, it is inconceivable that Respondent could have registered the <adwordsaccounting.com> domain name without actual knowledge of Complainant's rights in the mark. It is further asserted that, as evidenced by its conduct, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Evidence of actual knowledge of a complainant’s trademark is an adequate foundation upon which to base a finding bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Specifically, Complainant asserts that Respondent’s use of the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme aimed at Complainant’s customers indicates that it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the disputed domain name in bad faith.
Complainant next claims that Respondent’s bad faith is demonstrated by its use of an email address associated with the <adwordsaccounting.com> domain name to pass itself off as Complainant in furtherance of the above-mentioned phishing scheme. Use of an email address to pass oneself off for the purposes of commercial benefit may demonstrate bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)); see also Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). The Panel notes that Complainant provides copies of email correspondence from the address, <collections@adwordsaccounting.com>, which requests users to submit payments to what are claimed to be new bank details. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent’s failure to use the <adwordsaccounting.com> domain name in connection with any website content is evidence of its bad faith registration and use. In light of the above finding on bad faith by use of the disputed domain name for phishing, the Panel determines that it is not necessary to address this further ground for bad faith in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adwordsaccounting.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 25, 2019
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