Google LLC v. Janice Lipshutz / googleflights / Kapsky Team / Kapsky
Claim Number: FA1905001842233
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Janice Lipshutz / googleflights / Kapsky Team / Kapsky (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <google-flights.net> and <googleflights-search.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 10, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <google-flights.net> and <googleflights-search.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 May 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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.net, postmaster@googleflights-search.com. Also on May 17, 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 June 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 online flight search and booking service, as well as Internet search services, cloud services, a social networking platform, translation search services, mapping services, Internet browser software, and online advertising services. Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004). Complainant also has common law rights in the GOOGLE FLIGHTS mark through secondary meaning and extensive use of the mark in the market. Respondent’s <google-flights.net> and <googleflights-search.com> domain names are confusingly similar to Complainant’s GOOGLE mark as they fully incorporate the mark and add a hyphen, a generic term “flights” or “search” and a generic top-level domain “.net” or “com.” These domain names are also confusingly similar to Complainant’s GOOGLE FLIGHTS mark as they fully incorporate the mark and add a hyphen, a generic term “search,” and generic top-level domain “.net” or “.com”.
Respondent has no rights or legitimate interests in the <google-flights.net> and <googleflights-search.com> domain names. Complainant has not authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names. Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. The domain names resolve to webpages that enable internet users to search and book airline flights. Respondent is using the domain names in connection with a phishing scheme.
Respondent is using the domain names to attract internet users by creating a likelihood of confusion with Complainant’s marks. Respondent is using the disputed domain names for commercial gain in furtherance of a phishing scheme. Respondent registered and used the disputed domain names in bad faith because Respondent had prior actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant offers a wide range of Internet-related products and services, including online flight search and booking service, as well as Internet search services, cloud services, a social networking platform, translation search services, mapping services, Internet browser software, and online advertising services. Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004). Complainant also has common law rights in the GOOGLE FLIGHTS mark through secondary meaning and extensive use of the mark in the market. Respondent’s <google-flights.net> and <googleflights-search.com> domain names are confusingly similar to Complainant’s GOOGLE and GOOGLE FLIGHTS marks.
Respondent registered the <google-flights.net> domain name on February 18, 2019 and the <googleflights-search.com> domain name on February 4, 2019.
Respondent has no rights or legitimate interests in the <google-flights.net> and <googleflights-search.com> domain names.
Respondent registered and is using the domain names in bad faith.
PRELIMINARY ISSUE – MULTIPLE RESPONDENTS AND CONSOLIDATION
Complainant has alleged that the entities which control the domain names are effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that both of the <google-flights.net> and <googlefligths-search.com> domain names are controlled by the same persons or entities.
According to the Whois Records at the time of the filing of the Complaint, (1) the identities of the registrants of the <google-flights.net> and <googlefligths-search.com> were privacy protected by the same service, namely, WhoisGuard Protected / WhoisGuard, Inc. and (2) the domain names were registered within just a few days of each other, on February 4, 2019 and February 18, 2019.
The domain names utilize a highly similar format using Complainant’s GOOGLE and GOOGLE FLIGHTS marks. Much of the content on the resolving websites is identical or nearly identical. For example, each prominently features an identical airline flight search field that states: “Find Cheap Tickets - Save more.” Panels have found domain names to be “commonly controlled where the content of their websites were substantially identical.” Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, D2010-0281 (WIPO May 18, 2010); see also Google Inc. v. NURINET / Noorinet / NURINET, FA1502299 (Forum Sep. 24, 2013) (finding domain names to be under common control in part because the domains resolved to websites featuring identical content).
Internet users searching for flights on the website resolving from the <google-flights.net> domain name are re-directed to the site associated with the <googlefligths-search.com> domain name. Panels have found domains to be under common control where the domain names resolve to the same online website. See, e.g., Eli Lilly and Company v. Thomas Michael et al., FA1638884 (Forum Dec. 10, 2015) (finding multiple domain names to be under common control in part because they “all resolve to the same on-line pharmacy where the web pages are similar, all offering pharmaceutical products of the same nature”).
The Panel concludes that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same persons or entities and thus chooses to proceed with the instant proceeding.
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 has rights in the GOOGLE mark under Policy ¶ 4(a)(i) through registrations with the USPTO. Registration of a mark with the USPTO 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)).
Complainant has common law rights in the GOOGLE FLIGHTS mark through its continued use of the mark in commerce. Common law rights can be established through acquired secondary meaning. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Here, Complainant has presented sufficient evidence of continuous use in commerce and the marketplace of its online flight search and book service under GOOGLE FLIGHTS to show common law rights in the mark under Policy ¶ 4(a)(i).
Complainant’s rights in the GOOGLE mark through registration and in GOOGLE FLIGHTS through common law predate Respondent’s registration of the disputed domain names.
Respondent’s <google-flights.net> and <googleflights-search.com> domain names are confusingly similar to Complainant’s GOOGLE mark as they fully incorporate the mark and add a hyphen, a generic term “flights” or “search” and a generic top-level domain “.net” or “com.” These domain names are confusingly similar to Complainant’s GOOGLE FLIGHTS mark as they fully incorporate the mark and add a hyphen, a generic term “search,” and generic top-level domain “.net” or “.com”.
Respondent has no rights or legitimate interests in the <google-flights.net> and <googleflights-search.com> domain names. Complainant has not authorized Respondent to use these marks. The WHOIS information does not show that the registrants are known by the domain names. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, Respondent is not commonly known by the <google-flights.net> and <googleflights-search.com> domain names.
Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <google-flights.net> and <googleflights-search.com> domain names under Policy ¶ 4(c)(i) and (iii). The disputed domain names resolve to webpages that enable internet users to search and book airline flights. Use of a domain name to divert internet users away from a complainant to a competing service by a respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Additionally, Respondent’s use of the domain names in connection with phishing is not a bona fide offering of goods or service or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (Respondent’s apparent phishing attempt provides evidence that the respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)). Here, Complainant’s evidence of emails and other communications show Respondent’s use of the domain names to obtain personal and financial information.
Respondent registered and used the <google-flights.net> and <googleflights-search.com> domain names in bad faith under Policy ¶ 4(b)(iv) by trying to attract internet users by creating a likelihood of confusion with Complainant’s marks. 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).
Respondent tried to pass off as Complainant which is further evidence of bad faith under Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).
Respondent’s attempt to engage in phishing shows bad faith. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was using a confusingly similar domain name in a fraudulent phishing scheme to acquire the personal and financial information of Internet users.).
Respondent had actual knowledge of Complainant’s GOOGLE and GOOGLE FLIGHTS mark prior to registration of the domain names. Therefore, Respondent registered and used the domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.").
Complainant 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.net> and <googleflights-search.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 24, 2019
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