Google LLC v. Pulkit Gulati
Claim Number: FA1907001854476
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Pulkit Gulati (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleflightssearch.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2019; the Forum received payment on July 29, 2019.
On July 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googleflightssearch.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 August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@googleflightssearch.com. Also on August 1, 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 August 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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
i) Complainant offers a wide range of Internet-related products and services, including an online flight search and booking service, Internet search services, cloud services, a social networking platform, translation 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). See Compl. Annex 13. Complainant also has common law rights in the GOOGLE FLIGHTS mark. Respondent’s <googleflightssearch.com> domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE FLIGHTS mark as Respondent’s domain name incorporates Complainant’s marks in its entirety and adds the generic terms “search” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to its disputed domain name that offers services that directly compete with Complainant. Respondent also uses the disputed domain name to engage in a phishing scheme.
iii) Respondent registered and used the disputed domain name in bad faith. Respondent attempts to create a likelihood of confusion with Complainant’s mark by passing off as Complainant to offer competing services. Respondent also engages in a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS marks prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on June 7, 2019.
2. Complainant has established 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).
3. Complainant has adequately shown common law rights for the GOOGLE FLIGHTS mark.
4. The disputed domain name’s resolving website features the GOOGLE FLIGHTS mark in connection with traveling and flight services.
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 that it has 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 a copy of its USPTO registration for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004) See Compl. Annex 13. Therefore, the Panel finds that Complainant has adequately shown rights in the GOOGLE mark per Policy ¶ 4(a)(i).
Complainant further claims that it has common law rights in the GOOGLE FLIGHTS mark. Demonstration of using a mark in commerce is sufficient to establish common law rights in a mark per Policy ¶ 4(a)(i). 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.”). Complainant has provided a screenshot of its website where it is actively using the GOOGLE FLIGHTS mark in connection with traveling and flight services. See Compl. Annex 10. Complainant also provides news articles referring to Complainant’s GOOGLE FLIGHTS mark and its widespread use of the GOOGLE mark generally. See Compl. Annexes 6-13. Therefore, the Panel finds that Complainant has adequately shown common law rights for the GOOGLE FLIGHTS mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE FLIGHTS marks. Registration of a domain name that includes a complainant’s mark and adds a generic term and gTLD does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant argues that Respondent incorporates its GOOGLE and/or GOOGLE FLIGHTS marks in their entirety and adds the generic term “search” and “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks 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), 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”).
Complainant argues Respondent lacks rights or legitimate interest in the <googleflightssearch.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the GOOGLE or GOOGLE FLIGHTS marks or register domain names using Complainant’s mark. 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 name lists the registrant as “Pulkit Gulati” and there is no other evidence to suggest that Respondent was authorized to use the GOOGLE or GOOGLE FLIGHTS marks. See Amend. Compl. Annex 16. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends 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 name to divert Internet users to its resolving webpage that offers services that directly compete with Complainant. Use of a disputed domain name to resolve to a webpage that offers competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage that offers similar flight search services as Complainant. See Compl. Annex 14. Therefore, the Panel 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith by creating a likelihood of confusion with Complainant’s mark in an attempt to pass off as Complainant. Use of a disputed domain name in an attempt to create a likelihood of confusion and pass off as a complainant may be evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant argues that Respondent took advantage of the confusingly similarity nature of the disputed domain name and Complainant’s mark to confuse Internet users into thinking Respondent is affiliated with Complainant. Complainant provides a screenshot of the disputed domain name’s resolving website which features the GOOGLE FLIGHTS mark in connection with traveling and flight services. See Compl. Annex 14. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS marks prior to registration of the disputed domain name. 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 uses a well-known and famous mark may be evidence of actual knowledge of complainant’s rights in the mark per Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding 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). Complainant has provided the Panel with multiple news articles and other submissions that show the strength of the GOOGLE mark and how the GOOGLE FLIGHTS mark has been used in commerce. See Compl Annexes 7-12. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the GOOGLE and GOOGLE FLIGHTS marks prior to registration of the disputed domain name which constitutes 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 <googleflightssearch.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 26, 2019
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