DECISION

 

Google LLC v. priya prakash

Claim Number: FA1905001841594

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA.  Respondent is priya prakash (“Respondent”), India .

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googleflights.me> and <google-flights.online> (collectively “Domain Names”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 2, 2019; the Forum received payment on May 2, 2019.

 

On May 3, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <googleflights.me> and <google-flights.online> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 May 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@googleflights.me and postmaster@google-flights.online.  Also on May 6, 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 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant was created in 1997 and offers a wide range of Internet-related products and services, including an online flight search and booking service under the name GOOGLE FLIGHTS from its website at www.google.com/flights.  Complainant has rights in the GOOGLE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004) and has rights to the GOOGLE FLIGHTS mark under common law.  Respondent’s <googleflights.me> and <google-flights.online> domain names are identical or confusingly similar to both the GOOGLE and GOOGLE FLIGHTS marks, as the Domain Names fully incorporate the Complainant’s marks and add either the “.me” country code top-level domain (“ccTLD”) or the “.online” generic top-level domain (“gTLD”) and a hyphen.

 

Respondent has no rights or legitimate interest in the <googleflights.me> and <google-flights.online> domain names as the Respondent is not commonly known by the Domain Names, nor was Respondent authorized, licensed, or otherwise given permission to use Complainant’s marks.  Respondent does not use the Domain Names for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Names to pass itself off as Complainant and purports to offer flight booking services under the GOOGLE and GOOGLE FLIGHTS marks.

 

Respondent has registered and uses the <googleflights.me> and <google-flights.online> domain names in bad faith.  Respondent had actual or constructive knowledge of Complainant’s GOOGLE and GOOGLE FLIGHTS marks, as Complainant’s mark is fully incorporated in the Domain Names.  Respondent registered the Domain Names to target Internet users seeking Complainant’s services, and Respondent is attempting to pass itself off as Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the GOOGLE mark.  Each of the Domain Names is confusingly similar to Complainant’s GOOGLE mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant has rights in the GOOGLE mark based upon registration of the mark with the USPTO (Reg. No. 2,806,075, registered Jan. 20, 2004).  Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).  See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).

 

The Panel finds that each of the Domain Names is confusingly similar to the GOOGLE mark as they each incorporate the entire GOOGLE mark while adding generic terms (“flights” and “online”) and the “.me” country code top-level domain (“ccTLD) or a hyphen and the “.online” generic top-level domain (“gTLD”).  Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis.  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); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark");  see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain NamesIn order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GOOGLE mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).  The WHOIS information of record lists “priya prakash” as the registrant of record.  Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

The Domain Names resolve to websites (“Respondent’s Websites”) advertising flight booking services under the GOOGLE Mark, including identifying the entity behind the Respondent’s Websites as “Google Flights” and making reference to Complainant’s website at www.google.com/flights.  The services purported to be offered or advertised by the Respondent’s Websites are in direct competition to Complainant’s flight booking services and there has been no attempt to disclaim or otherwise make clear the absence of any association or connection with Complainant.  Given the reputation of Complainant and its GOOGLE Mark and the references made on the Respondent’s Websites to Complainant’s Google Flights service the Panel finds that Respondent is clearly attempting to associate itself with or pass itself of as Complainant.  Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).  See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).  See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

                             

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (February 25, 2018 and March 19, 2018), Respondent had actual knowledge of Complainant’s GOOGLE mark.  The Respondent’s Websites make frequent references to Complainant and include links to its Google Flights service at www.google.com/flights.  In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s GOOGLE Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites that purport to pass themselves off as Complainant (or as an entity associated with Complainant) and sell flight booking services in direct competition with Complainant.  Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv).  See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services.  Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <googleflights.me> and <google-flights.online> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Nicholas J.T. Smith, Panelist

Dated:  June 1, 2019

 

 

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