Google LLC v. Alexey Morozov
Claim Number: FA1905001841724
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Alexey Morozov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <google-flights.com> and <flights-google.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2019; the Forum received payment on May 3, 2019.
On May 7, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <google-flights.com> and <flights-google.com> 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 7, 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@google-flights.com, postmaster@flights-google.com. Also on May 7, 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a wide range of Internet-related products and services, including an online flight search and booking service, as well as various forms of Internet search services. Complainant has rights in the trademark GOOGLE based on its extensive global use in commerce dating back to 1997 as well as its registration with the United States Patent and Trademarks Office (“USPTO”) and various other national trademark offices around the world dating back to 2004. Complainant has not registered the full trademark GOOGLE FLIGHTS but claims common law rights in such mark dating back to September of 2011 based upon its extensive use of that mark. Respondent’s <google-flights.com> and <flights-google.com> domain names are identical or confusingly similar, as the domain names fully incorporate Complainant’s marks, merely adding a hyphen and the “.com” generic top-level domain (“gTLD”) in <google-flights.com>, and switching the order of the words and adding a hyphen and the “.com” gTLD in the <flights-google.com> domain name.
Respondent has no rights or legitimate interest in the <google-flights.com> and <flights-google.com> domain names, as the Respondent is not commonly known by the disputed domain names, nor was it authorized, licensed or otherwise given permission to use Complainant’s marks. Respondent does not use the disputed domain names as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent offers services that compete with Complainant’s services.
Additionally, Respondent registered and uses the <google-flights.com> and <flights-google.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the websites of the disputed domain names where it offers a travel search and booking service that directly competes with Complainant. Finally, Respondent had actual or constructive knowledge of Complainant’s 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, for each of the disputed domains, 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 has rights in its GOOGLE mark, based on registration with the USPTO and various other national trademark offices. Registration with the USPTO is sufficient to demonstrate rights in a mark, under Policy ¶ 4(a)(i). Further, Complainant has not registered the GOOGLE FLIGHTS mark, but claims rights at common law to the mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration prior to a respondent’s acquisition of a disputed domain name if it can demonstrate established, prior common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has acquired a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant demonstrates this by providing news clippings about its GOOGLE FLIGHTS service and screenshots of its relevant webpages. Therefore, the Panel finds that Complainant has established rights in both GOOGLE and GOOGLE FLIGHTS marks per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <google-flights.com> and <flights-google.com> domain names are identical or confusingly similar to Complainant’s marks, as the Respondent fully incorporates the marks, merely adding a hyphen and the “.com” gTLD in <google-flights.com>, and switching the order of the words and adding a hyphen and the “.com” gTLD in the <flights-google.com> domain name. A disputed domain name can be found to be identical to a mark, when respondent fully incorporates the mark and merely adds a gTLD, under ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Further, the addition of hyphens is not enough to distinguish a disputed domain name from a mark for identical or confusingly similar analysis, under ¶ 4(a)(i). See 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"). Finally, inverting terms within a complainant’s mark may be an insufficient change to mitigate any confusing similarity. See T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED, FA 1705342 (Forum Jan. 16, 2017) (“Respondent’s <tpricerowe.com> differs from the mark by inverting the words “Rowe” and “price” in the mark. Inverting the words in a mark is not sufficient to overcome a finding of confusing similarity.”). Therefore, the Panel finds that Respondent’s <google-flights.com> and <flights-google.com> domain names are identical or confusingly similar to Complainant’s marks.
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 interest in the <google-flights.com> and <flights-google.com> domain names, as the Respondent is not commonly known by the disputed domain names, nor was it authorized, licensed or otherwise given permission to use Complainant’s marks. Relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name, under Policy ¶ 4(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). Additionally, lack of authorization to use a complainant’s mark may support a finding that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, Complainant provides the WHOIS information for the disputed domain names, which identifies the registrant as “Alexey Morozov” and, in the absence of a Response or other submission by the Respondent, there is no information to suggest that Respondent is known otherwise or that it was authorized to use Complainant’s GOOGLE or GOOGLE FLIGHTS marks. Therefore, the Panel finds that the Respondent is not commonly known by the <google-flights.com> and <flights-google.com> domain names per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent has no rights or legitimate interests in the <google-flights.com> and <flights-google.com> domain names, as the Respondent is not using the disputed domain names for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Complainant contends that Respondent uses the disputed domain names to offer services that compete with Google’s GOOGLE FLIGHTS services. Use of a disputed domain name that offers competing goods or services does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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.”). Here, Complainant offers screenshots of the Respondent’s webpages, which display the GOOGLE and GOOGLE FLIGHTS marks and provide flight booking services similar to the services provided by the Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <google-flights.com> and <flights-google.com> domain names, as the Respondent is not using the disputed domain names for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues it is inconceivable that Respondent registered the <google-flights.com> and <flights-google.com> domain names independently and without actual knowledge of Complainant’s GOOGLE and GOOGLE FLIGHTS trademarks. It further claims that Respondent had constructive knowledge of the GOOGLE mark at the time of registering the disputed domains based upon registration of such mark with the USPTO. In this case, the Panel will not consider arguments of bad faith based on constructive notice as UDRP case precedent generally declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel will consider whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names as actual knowledge can adequately support a finding of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this, Complainant points to the extensive use, media coverage, and value/fame rankings of its GOOGLE and GOOGLE FLIGHTS marks, Complainants worldwide trademark filings, and Respondent’s use of Complainant’s mark in the disputed domain names and on the resolving webpages. In light of the fame and extensive global use of the Complainant’s marks and the content of Respondent’s websites, the Panel finds it inconceivable that Respondent did not have actual knowledge of such marks when it registered the disputed domain names and this supports a finding of bad faith registration under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and uses the <google-flights.com> and <flights-google.com> domain names in bad faith as the Respondent is attempting to attract Internet users, for commercial gain, by offering competing travel research and booking services in connection with domain names that are likely to create confusion with Complainant’s marks as to sponsorship, affiliation or endorsement of Respondent’s activities. Using a confusingly similar domain name to offer competing goods or services can be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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). Here, the Panel notes that Complainant provides screenshots of webpages to which the <google-flights.com> and <flights-google.com> domain names resolve. These websites use Complainant’s GOOGLE and GOOGLE FLIGHTS marks throughout and offer users the ability to search for and book travel through a commercial, third-party site with which the Respondent also appears to be affiliated. Therefore, the Panel finds that Respondent registered and uses the <google-flights.com> and <flights-google.com> domain names in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google-flights.com> and <flights-google.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 31, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page