Google LLC v. Dzmitry Puzin
Claim Number: FA1906001849618
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, Washington DC, USA. Respondent is Dzmitry Puzin (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-phone-numbers.com> and <google-search-ip.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2019; the Forum received payment on June 25, 2019.The Complaint was submitted in both English and Russian.
On July 10, 2019, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <google-phone-numbers.com> and <google-search-ip.com> domain names are registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the names. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 July 11, 2019, the Forum served the Russian Language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of July 31, 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-phone-numbers.com, postmaster@google-search-ip.com. Also on July 11, 2019, the Russian language 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 August 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools that allows Internet users to search for and find a wide variety of online content in many different languages. Complainant has rights in the GOOGLE mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,884,502, registered Sep. 14, 2004). Respondent’s <google-phone-numbers.com> and <google-search-ip.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent adds the terms “phone numbers,” “search,” and “ip” to Complainant’s mark.
Respondent has no rights or legitimate interests in the <google-phone-numbers.com> and <google-search-ip.com> domain names as Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use any of its trademarks. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names redirect users seeking Complainant’s products to websites that have no affiliation with Complainant and attempt to pass off as Complainant.
Respondent registered and used the <google-phone-numbers.com> and <google-search-ip.com> domain names in bad faith as Respondent attempts to attract Internet users to the disputed domain names which are obviously connected to Complainant’s mark. Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration given the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making Russian the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant is Google LLC (“Complainant”) of Mountain View, CA, USA. Complainant was established under the GOOGLE name in 1997 and since that time has continuously offered a broad array of internet related technological products and services under its GOOGLE mark. Complainant is the owner of numerous domestic and international registrations for its GOOGLE mark and variations thereof constituting the family of GOOGLE marks.
Respondent is Dzmitry Puzin (“Respondent”), of Grodno, Belarus. Respondent’s registrar’s address is listed as Moscow, Russia. The Panel notes that Respondent registered the <google-phone-numbers.com> domain name on or about March 8, 2019 and the <google-search-ip.com> domain name on or about February 22, 2019.
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 registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with information pertaining to its USPTO registration for the GOOGLE mark (e.g. Reg. No. 2,884,502, registered Sep. 14, 2004). The Panel here finds that Complainant has adequately shown rights in the GOOGLE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <google-phone-numbers.com> and <google-search-ip.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent adds the terms “phone” and “numbers,” to the GOOGLE mark in the <google-phone-numbers.com> domain name and the terms “search” and “ip” to Complainant’s mark in the <google-search-ip.com> domain name. The addition of generic terms to a fully formed mark does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Further, the addition of a generic top-level domain (gTLD) and a hyphen is irrelevant when finding confusingly similarity of a mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Here, Respondent adds the “.com” gTLD and hyphens to each of its disputed domain names. The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <google-phone-numbers.com> and <google-search-ip.com> domain names as Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use any of its trademarks. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Dzmitry Puzin” and there is no other evidence to suggest that Respondent was authorized to use the GOOGLE mark or was commonly known by the disputed domain names. The Panel here finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect users seeking Complainant’s products to websites that have no affiliation with Complainant. Use of a disputed domain name to resolve to an unrelated webpage may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use….The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Here, Complainant provided screenshots of Respondent’s <google-phone-numbers.com> and <google-search-ip.com> domain names which Complainant contends are unaffiliated with Complainant. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues Respondent uses the <google-phone-numbers.com> and <google-search-ip.com> domain names to divert Internet users to the disputed domain names and offer goods and services related to Complainant. Passing off as a complainant to offer related goods or services may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per 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 provided screenshots of Respondent’s <google-phone-numbers.com> and <google-search-ip.com> domain names that show a search function for phone numbers and IP addresses, which Complainant contends are services related to Complainant’s business. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends that Respondent registered and uses the <google-phone-numbers.com> and <google-search-ip.com> domain names as Respondent attempts to attract Internet users to the disputed domain names which are obviously connected to Complainant’s mark. Use of a disputed domain name obviously connected to a complainant’s mark so as to create a likelihood of confusion with Complainant can demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that the disputed domain names are so obviously connected to the GOOGLE mark so as to attract internet users for commercial gain. The Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <google-phone-numbers.com> and <google-search-ip.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”). Registration of a disputed domain name that contains a famous and well-known mark may be evidence of bad faith per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided information pertaining to the fame of its mark through numerous industry awards. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark which constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <google-phone-numbers.com> and <google-search-ip.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 20, 2019
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