DECISION

 

Google LLC v. HKDA VIET NAM JSC / Dong Tran Le / Whois Privacy Protection Service by onamae.com / Domain Admin / Lee Chang

Claim Number: FA1908001856201

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA.  Respondent is HKDA VIET NAM JSC / Dong Tran Le / Whois Privacy Protection Service by onamae.com / Domain Admin / Lee Chang (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com>, registered with Onlinenic, Inc.; Namesilo, Llc; P.A. Viet Nam Company Limited, Onlinenic Inc.

 

PANEL

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.

.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 7, 2019; the Forum received payment on August 7, 2019.

 

On August 8, 2019; August 9, 2019; August 13, 2019, Onlinenic, Inc.; Namesilo, Llc; P.A. Viet Nam Company Limited, Onlinenic Inc confirmed by e-mail to the Forum that the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names are registered with Onlinenic, Inc.; Namesilo, Llc; P.A. Viet Nam Company Limited, Onlinenic Inc and that Respondent is the current registrant of the names.  Onlinenic, Inc.; Namesilo, Llc; P.A. Viet Nam Company Limited, Onlinenic Inc has verified that Respondent is bound by the Onlinenic, Inc.; Namesilo, Llc; P.A. Viet Nam Company Limited, Onlinenic 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 August 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@googleappslegacy.com, postmaster@gsuitelegacy.net, postmaster@gsuitelegacy.com, postmaster@gsuitefree.com, postmaster@ggsuite.com.  Also on August 30, 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 25, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PANEL NOTE: SUPPORTED LANGUAGE REQUEST

The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a).  Complainant makes this request in light of the Vietnamese language Registration Agreement. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  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 Respondent is using each of the disputed domain names in an essentially identical manner, i.e. in connection with a commercial website that purports to sell G Suite accounts and related products/services. The resolving websites of the <gsuitelegacy.net>, <gsuitelegacy.com>, and <googleappslegacy.com> domain names feature contact information that advise users that Respondent may be reached at the same “GoogleAppsLegacy” Skype account. Similarly, the website resolving from the <ggsuite.com> domain name features a “Knowledgebase” and “News” page that is essentially identical in layout to those of the <gsuitelegacy.com> and <gsuitefree.com> domain names. The websites resolving from the <gsuitelegacy.net> and <gsuitelegacy.com> domain names feature highly similar brand-like treatments of “G SUITE LEGACY.” The websites resolving from the <gsuitelegacy.net> and <googleappslegacy.com> domain names feature Terms of Service pages that are nearly identical. The <gsuitelegacy.com> and <googleappslegacy.com> domain names each incorporate a link to the same Facebook page, namely, <Facebook.com/GGAppsFree/>. All five of the disputed domain names utilize a Cloudflare name server. Additionally, the <gsuitefree.com>, <googleappslegacy.com>, and <ggsuite.com> domain names each utilize the same registrar. Furthermore, the <gsuitefree.com> and <ggsuite.com> domain names were registered on the same day, September 30, 2016. The Panel here finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled. The Panel will refer to the listed entities collectively as “Respondent” throughout the rest of this decision.

 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant offers a wide range of Internet-related products and services and computer hardware, including cloud computing tools and services, cloud storage and file sharing, software and services, etc. Complainant has rights in the GOOGLE and G SUITE marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., G SUITE – Reg. No. 5,708,231, registered Mar. 26, 2019; GOOGLE – Reg. No. 4,123,471, registered Apr. 10, 2012). Complainant also has common law rights in the G SUITE mark that extend back its first use of the mark on September 29, 2016. Respondent’s <googleappslegacy.com> domain name is confusingly similar to Complainant’s GOOGLE mark as it incorporates the mark in its entirety, along with generic terms “apps,” “legacy,” and a “.com” generic top-level domain name (“gTLD”). Additionally, the <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names are confusingly similar to Complainant’s G SUITE mark as each incorporate the mark in its entirety, in one instance adds an extra letter “g”, and in other cases adds a generic term “legacy” or “free,” and a “.net” or “.com” gTLD.

 

Respondent has no rights or legitimate interests in the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names. Respondent is not authorized to use Complainant’s GOOGLE or G SUITE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to prominently display the GOOGE and/or G SUITE mark in connection with a website that displays Complainant’s GOOGLE and G SUITE products and services.

 

Respondent registered and uses the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names in bad faith. Respondent’s registration of five domain names that fully incorporate Complainant’s marks indicates a pattern of bad faith registration. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it offers competing goods and services under the GOOGLE and G SUITE marks. Respondent’s use of the disputed domain name to sell unauthorized versions of Complainant’s G SUITE products violates Complainant’s Terms of Services. Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE and G SUITE marks prior to registering the disputed domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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. Complainant’s primary website is located at <google.com> and Complainant owns and operates nearly 200 websites at GOOGLE-formative domain names. Complainant is also the owner of numerous domestic and international registrations for the mark G SUITE which it has used continuously since at least as early as 2016 in connection with its enterprise productivity and collaboration products.

 

Respondent is HKDA VIET NAM JSC / Dong Tran Le / Whois Privacy Protection Service by onamae.com / Domain Admin / Lee Chang (“Respondent”), of Hong Kong, China. Respondent’s registrars are located in Viet Nam, Hong Kong and the USA. The Panel notes that the disputed domain names were registered on or about the following dates:

 

<googleappslegacy.com>

March 7, 2016

<gsuitelegacy.net>

August 7, 2018

<gsuitelegacy.com>

January 16, 2017

<gsuitefree.com>

September 30, 2016

<ggsuite.com>

September 30, 2016

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the G SUITE and GOOGLE marks based upon registration of the mark with the USPTO (e.g., G SUITE – Reg. No. 5,708,231, registered Mar. 26, 2019; GOOGLE – Reg. No. 4,123,471, registered Apr. 10, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel is also reminded that the relevant date of rights in a mark extend back to its filing date. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). The Panel notes that Respondent’s <gsuitefree.com>, and <ggsuite.com> domain names predate Complainant’s trademark registrations for the G SUITE mark, including its relevant date of filing (November 28, 2016). The Panel here finds that Complainant’s registration of the G SUITE and GOOGLE marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant further asserts rights in the G SUITE mark through its continuous and extensive use of the mark since September 29, 2016. Complainant claims that it was on this date that it rebranded its grouping of enterprise productivity and collaboration under the G SUITE mark. The Panel considers Complainant’s arguments as suggesting that it has common law rights in a mark, which can be established through a showing of secondary meaning. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (finding Complainant had satisfied the requirements for common law rights in the PSYONIX mark where it was “the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide,” and “Complainant provided a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant, [and] are associated with Complainant amongst the consuming public worldwide.”). Complainant provides printouts of its products and services associated with the G SUITE mark, articles concerning the mark, and articles concerning users who use G SUITE related products and services. The Panel here finds that Complainant has common law rights in the G SUITE mark, dating back as early as September 29, 2016, per Policy ¶ 4(a)(i).

 

Complainant next argues Respondent’s <googleappslegacy.com> domain name is confusingly similar to Complainant’s GOOGLE mark as it incorporates the mark in its entirety, along with generic terms “apps,” “legacy,” and a “.com” gTLD. Additionally, Complainant argues that the <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names are confusingly similar to Complainant’s G SUITE mark as each incorporate the mark in its entirety, in one instance adds an extra letter “g”, and in other cases adds a generic term “legacy” or “free,” and a “.net” or “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”). The Panel here finds that the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names are confusingly similar to the GOOGLE and/or G SUITE marks per Policy ¶ 4(a)(i).

 

Respondent raises no contentions with regards to Policy ¶ 4(a)(i).

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

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 that Respondent has no rights or legitimate interests in the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GOOGLE or G SUITE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “HKDA VIET NAM JSC,” “Dong Tran Le,” “Whois Privacy Protection Service by onamae.com,” “Domain Admin,” or “Lee Chang” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel here finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names.

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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).”). Specifically, Complainant contends that the domain name resolves to websites that feature the GOOGLE and G SUITE marks in connection with links to Complainant’s website, offers to sell G SUITE accounts and related services, and makes multiple direct references to Complainant.  Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel here finds that Respondent does not have rights or legitimate interests in the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names.

 

            Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant claims Respondent’s use of the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant.  Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant contends that the domain name resolves to websites that feature the GOOGLE and G SUITE marks in connection with links to Complainant’s website, offers to sell G SUITE accounts and related services, and makes multiple direct references to Complainant. The Panel here finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).

 

Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE and G SUITE marks, it is inconceivable that Respondent could have registered the <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of 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.”). Complainant further asserts that Respondent’s use of the domain name to prominently display the GOOGLE and G SUITE marks and direct references to Complainant’s business indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and used the names in bad faith.

 

Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

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 <googleappslegacy.com>, <gsuitelegacy.net>, <gsuitelegacy.com>, <gsuitefree.com>, and <ggsuite.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Darryl C. Wilson, Panelist

Dated: October 8, 2019

 

 

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