Google LLC v. Marina Chase
Claim Number: FA1908001855821
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, Washington DC, USA. Respondent is Marina Chase (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-analytîcs.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2019; the Forum received payment on August 5, 2019.
On August 12, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <google-analytîcs.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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-analytîcs.com. Also, on August 20, 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 September 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a wide range of Internet related goods and services, including Internet search engine service, email and cloud computing tools.
Complainant holds a registration for the GOOGLE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,123,471, registered April 10, 2012.
In November 2005, Complainant launched its GOOGLE ANALYTICS web analytics service, which tracks and reports on data regarding website traffic to assess Internet marketing strategies and results.
Complainant’s GOOGLE ANALYTICS service resides at the domain name <analytics.google.com>.
Complainant’s GOOGLE ANALYTICS service is the most widely used web analytics service on the World Wide Web.
Respondent registered the domain name <google-analytîcs.com> on May 16, 2019.
The domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent is not authorized to use Complainant’s GOOGLE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent fails to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to redirect users to Respondent’s unrelated website or to the websites of third parties.
Furthermore, Respondent uses the domain name to distribute malware and to “phish” for Internet users’ sensitive personal information.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s employment of the domain name is an attempt to profit by redirecting Internet users away from Complainant’s official website.
Respondent knew of Complainant’s rights in the GOOGLE mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith[TP1] .
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark for purposes of the Policy).
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <google-analytîcs.com> domain name is confusingly similar to Complainant’s GOOGLE service mark. The domain name incorporates the mark in its entirety, with only the addition of a hyphen and of the term “analytics,” which relates to a significant aspect of Complainant’s business (the dot above the “i” in that term having been replaced with a circumflex (“^”), plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, ADP, LLC. v. Ella Magal, FA 1773958 (Forum August 2, 2017):
Respondent’s … domain name appropriates the dominant portion of Complainant’s … mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the … mark.”
See also Kohler Co. v. Curley, FA 890812 (Forum March 5, 2007) (finding confusing similarity where the domain name <kohlerbaths.com> contained a UDRP complainant’s entire mark, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Further see Bittrex, Inc. v. john sins / bittrex, FA 1769182 (Forum February 28, 2018):
The domain name, in its untranslated form, is therefore substantively identical to the … mark, with [only] a circumflex accented ‘ê’ in place of the letter ‘e,’ and the appended generic Top Level Domain (“gTLD”) ‘.com.’”
Finally see Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), finding that:
[The a]ddition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen.
Under Policy ¶4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <google-analytîcs.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <google-analytîcs.com> domain name, and that Complainant has not authorized Respondent to use the GOOGLE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Marina Chase,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner); see also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <google-analytîcs.com> domain name to redirect Internet users, for its profit, to Respondent’s own website or to the websites of third-parties. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, 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 … domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).
See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
We also take cognizance of Complainant’s contention that Respondent uses the <google-analytîcs.com> domain name to distribute malware and to “phish” for Internet users’ sensitive personal information. This too is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005), finding that a respondent’s use of a domain name that sought to download malicious computer software into the computers of those who visit the website, which might either annoy or harm Internet users in some way was harmful to a UDRP complainant because those users might assume that that complainant had some affiliation with the harmful content, and concluding that:
Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶4(c)(i) or (iii).
See also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017):
Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <google-analytîcs.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, PopSockets LLC v. san mao, FA 1740903 (Forum August 27, 2017) (finding disruption of a complainant’s business by the use of a challenged domain name, which was sufficient to establish bad faith registration and use under Policy ¶ 4(b)(iii)). See also Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018):
The Panel here finds that Respondent[‘s installation of malware] further support[s] the conclusion that Respondent registered and used the … domain name in bad faith under Policy¶ 4(a)(iii).
Further see Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015):
Respondent uses the … domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and of its rights in the GOOGLE mark when Respondent registered the <google-analytîcs.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration of a contested domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <google-analytîcs.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 11, 2019
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