Google LLC v. ahmet karatas
Claim Number: FA1904001840363
Complainant is Google LLC (“Complainant”), represented by Brendan J. Hughes of Cooley LLP, District of Columbia, United States. Respondent is ahmet karatas (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlekurumsal.com>, registered with GoDaddy.com, LLC.
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 April 24, 2019; the Forum received payment on April 24, 2019.
On April 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlekurumsal.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@googlekurumsal.com. Also on April 25, 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 May 16, 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 is one of the most highly recognized and widely used internet search services in the world and it also provides a suite of cloud computing services. Complainant has rights in the trademark GOOGLE through its extensive use of the mark in commerce since 1997 and its registrations with the United States Patent and Trademark Office (“USPTO”) and other national trademark offices going back to 1998. Respondent’s <googlekurumsal.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it incorporates the mark in its entirety and adds the generic term “kurumsal”, which means “corporate” in the Turkish language.
Respondent has no rights or legitimate interests in the <googlekurumsal.com> domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the domain name to make a bona fide offering of goods or services. Instead, Respondent’s <googlekurumsal.com> domain name direct Internet users to a website that purports to sell unauthorized Google Cloud Platform enterprise website design services.
Respondent registered and used the <googlekurumsal.com> domain name in bad faith. Respondent tries to connect its domain with the fame of Complainant’s mark and deceive internet users into believing it is affiliated with Complainant. Lastly, Respondent was well-aware of Complainant’s rights in the GOOGLE mark due to Complainant’s extensive, global use and fame of the GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the disputed domain names were registered and are 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the GOOGLE mark through its use of the mark and its registrations with the USPTO and other national trademark offices around the world. Registration of a mark with national trademark offices is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with evidence of its registrations for the GOOGLE mark. Therefore, the Panel finds that Complainant has rights in the GOOGLE mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <googlekurumsal.com> domain name is confusingly similar to Complainant’s GOOGLE mark because Respondent adds the generic term “kurumsal”, which translates to the word “corporate” in the Turkish language. The “.com” generic top-level domain (“gTLD”) is also added to the mark. Panels have previously held that the addition of a generic term and a gTLD to a mark is insufficient to diminish the confusingly similar nature. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Here, Complainant argues that Respondent’s sole change to the mark was the addition of the word “kurumsal” and the “.com” TLD. Therefore, the Panel finds that Respondent’s <googlekurumsal.com> is confusingly similar to Complainant’s GOOGLE 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 asserts that Respondent has no rights or legitimate interests in the <googlekurumsal.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s GOOGLE mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See 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). The Panel notes that the WHOIS information identifies Respondent as “Ahmet Karatas” and there is nothing in the record to suggest that Respondent is known otherwise or that it is authorized to use the GOOGLE mark. Thus, the Panel finds that Respondent is not commonly known by the <googlekurumsal.com> domain name per Policy ¶ (c)(ii).
Complainant further argues that Respondent does not use the <googlekurumsal.com> domain name to make a bona fide offering of goods or services. Instead, Complainant states that Respondent’s domain name directs Internet users to a website that purports to sell unauthorized Google Cloud Platform enterprise website design services. Panels have previous held that attempts to pass oneself off as a Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with screenshots of Respondent’s website that resolves from the disputed domain name. These screenshots show Complainant’s GOOGLE mark and logos displayed prominently along with the offering of Respondent’s web design services. Therefore, the Panel finds that Respondent’s attempts to pass itself off as Complainant do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent was well-aware of Complainant’s rights in the GOOGLE mark at the time Respondent registered and subsequently used the <googlekurumsal.com> domain name and this indicates bad faith registration and use. Panels have regularly held that actual knowledge of a complainant’s rights in its mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding that the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant contends that the extensive, global use and fame of the GOOGLE mark indicates that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent had actual notice of Complainant’s rights in the GOOGLE mark per Policy ¶ (4)(iii).
Complainant next contends that Respondent registered and is using the <googlekurumsal.com> domain name in bad faith. Complainant states that Respondent tries to connect its domain name with the fame of Complainant’s mark and deceive internet users into believing it is affiliated with Complainant. Panels have previously held that using a domain name to leverage the fame of a mark to provide services that impersonate the complainant is evidence of passing off and bad faith. See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith); Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, D2018-0780 (WIPO May 17, 2018) (bad faith registration and use found where the “Respondent has used the disputed domain name to impersonate the Complainant”). Here, Complainant has provided screenshots of Respondent’s website under the disputed domain name that shows Complainant’s GOOGLE mark and logos along with the promotion of Respondent’s own website design services. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per 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 <googlekurumsal.com> domain name be TRANSFERRED from Respondent to Complainant
Steven M. Levy, Esq., Panelist
Dated: May 17, 2019
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