Google LLC v. Phishd Administrator
Claim Number: FA1909001863580
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, USA. Respondent is Phishd Administrator (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googel.cloud>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2019; the Forum received payment on September 23, 2019.
On September 24, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <googel.cloud> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 September 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@googel.cloud. Also on September 24, 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 October 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 <googel.cloud> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the GOOGLE trademark acquired through its large portfolio of trademark registrations more particularly described below, and its use of the GOOGLE name and mark in association with its search engine since 1997.
Complainant submits that its GOOGLE search engine has become one of the most highly recognized and widely used Internet search services in the world. Google’s primary website is located at <http://google.com>, and Google owns and operates hundreds of additional domain names on nearly every top-level country code domain consisting solely of the GOOGLE mark. The GOOGLE search engine accesses indexed online content to provide an 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.
Google launched its GOOGLE CLOUD and GOOGLE CLOUD PLATFORM branded offerings in April 2008 which include management tools, modular cloud services including computing, data storage, data analytics, and machine learning, infrastructure as a service, platform as a service, and serverless computing environments, and enterprise applications and application programming interfaces (APIs) and has an established website for the offerings at <https://cloud.google.com/>.
Complainant submits that the disputed domain name <googel.cloud> incorporates Complainant’s famous GOOGLE mark in its entirety, and is therefore confusingly similar to the GOOGLE mark.
The disputed domain name merely adds the term “cloud,” and misspells GOOGLE as GOOGEL. The addition of the generic term “cloud” to Google’s trademark, and the swapping of the final “e” and “l,” do not negate a finding of confusing similarity under the Policy. Complainant submits that changing one letter in a valid mark “can often be per se cybersquatting.” eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, et. al., D2004-0552 (WIPO Sept. 11, 2004). “That is the gist of the typosquatting cases, in which a respondent changes or transposes one or a few letters in a mark, often to nearby letters on a standard computer keyboard. Such obviously intentional imitation of another’s mark has been held to be presumptive, even conclusive, evidence of all three elements of the Policy.” Id.
Panels established under the Policy have on numerous occasions found that appending the “.cloud” generic top-level domain (gTLD) to a confusingly similar mark is not sufficient to avoid a likelihood of confusion. Capital One Financial Corp. v. hello@thedomain.io / Jurgen Neeme, FA1903001832548 (the Forum April 2, 2019) (“Respondent’s <capitalone.cloud> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely appends the ‘.cloud’ generic top-level domain (“gTLD”)”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name; Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks, including its registered GOOGLE mark; Respondent is not commonly known as the disputed domain name or any name containing the GOOGLE mark; Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the GOOGLE mark as Respondent’s name; Respondent’s use of the disputed domain name to direct Internet users to a website that does not currently resolve and is instead associated with a phishing scheme; neither can Respondent claim that it is offering bona fide goods or services by redirecting users who are seeking Complainant’s products and/or services to a website associated with a phishing scheme.
Complainant submits that the evidence overwhelmingly supports the conclusion that Respondent registered and is using the domain name in bad faith. The fame and unique qualities of the GOOGLE mark, which was adopted by Complainant prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the domain name independently. Respondent’s wilful intent to violate Complainant’s intellectual property rights is further exhibited by the inclusion of the entirety of the GOOGLE mark, with a minor typo, apparently to refer to Complainant’s GOOGLE mark, in the domain name.
Given Respondent’s registration of a domain name that fully incorporates the GOOGLE mark, it is impossible to conceive of any potential legitimate use of the domain name. Here, the “[r]espondent has appropriated a trademark having a strong reputation and widely known.” Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is [therefore] not possible to conceive of any plausible actual or contemplated active use of the domain name[s] by the [r]espondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Id.; see also, Banco Bilbao Vizcaya Argentaria, S.A. v. Okon, D2004-0245 (WIPO May 31, 2004) (finding that registrant’s “passive use” amounted to bad faith use due to the fame of the complainant’s mark and lack of evidence of any good faith). As such, Respondent is using the Domain Name in bad faith.
Furthermore, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used…its domain name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
In addition, “[p]rior panels have determined that a respondent’s use of a disputed domain name to offer competing services for its own commercial gain evidences bad faith under Policy ¶ 4(b)(iv).” See Yahoo! Inc. v. Arora / E-squad Tech., FA1311001531666 (Forum Dec. 31, 2013) (ordering transfer of <yahootechnicalhelp.com> which resolves to a webpage that providing technical services under ‘Yahoo Technical Help’). To the extent Respondent offers any legitimate commercial services in connection with the domain name, such services compete directly with Google’s own Google Cloud services.
Complainant has furnished a screenshot of a message from no-reply@googlel.cloud as evidence of its allegation that the disputed domain name is being used in bad faith for phishing. The message states, “To whom it may concern, We regret to inform you that on 30-06-2019 Google suffered a data breach hat may require notification to the regulator. As a supplier of (named bank), and in line with our contractual agreements and commitments, we must inform yut that this may affect the service that can be provided by the Bank..”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Google owns numerous registrations for the GOOGLE mark in the United States and across the globe dating back to as early as 1999 including two registrations in Afghanistan where, according to the Registrar’s WhoIs information, is the address of the Respondent viz.
· Afghanistan trademark GOOGLE registration number 7586, registered on December 22, 2005; and
· Afghanistan registered trademark number 8035, registered on February 26, 2007.
The disputed domain name <googel.cloud> was registered on September 24, 2018 and currently does not resolve to an active website.
In the absence of a Response, there is no information about Respondent except that set out in the Complaint and the Registrar’s WhoIs.
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 provided evidence of its rights in the GOOGLE trademark through its ownership of the abovementioned portfolio of registered trademarks and its use of the GOOGLE mark on its world famous search engine.
The disputed domain name <googel.cloud> is almost identical to the GOOGLE trademark. The only difference is the reversed positions of the letters “e” and “l”. The gTLD <.cloud> extension may be ignored for the purposes of comparison.
Having compared the disputed domain name and Complainant’s mark, this Panel finds that the similarity is so close that on the balance of probabilities Internet users would be confused by the similarity.
Complainant has therefore satisfied the first element of the test in Policy Paragraph 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name asserting that Complainant has not authorized or licensed Respondent to use any of its trademarks, including its registered GOOGLE mark; that Respondent is not commonly known as the disputed domain name or any name containing the GOOGLE mark; that Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the GOOGLE mark as Respondent’s name; that Respondent’s use of the disputed domain name to direct Internet users to a website that does not currently resolve and is instead associated with a phishing scheme; and neither can Respondent claim that it is offering bona fide goods or services because it is redirecting users who are seeking Complainant’s products and/or services to a website associated with a phishing scheme.
In such circumstances, the burden of production shifts to Respondent to prove that it has such rights or legitimate interests. Respondent has failed to file a Response and therefore has failed to discharge the burden of production.
This Panel finds that Respondent has no rights or legitimate interest in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy Paragraph 4(a)(ii).
Given the fame of Complainant’s search engine, it is improbable that the disputed domain name was registered without the knowledge of Complainant’s rights and reputation. There is no plausible possibility that Respondent could use the disputed domain name for any good faith purpose. On the balance of probabilities, the disputed domain name was registered in order to take predatory advantage of Complainant’s rights and reputation and to mislead Internet users.
Furthermore on the balance of probabilities, the disputed domain name, being Complainant’s trademark with the last two letters “l” and “e” in reverse positions, is an example of typosquatting, intended to mislead consumers in bad faith into the belief that the disputed domain name is associated with Complainant.
Complainant has provided convincing evidence that the disputed domain name has been used for the purpose of phishing. Respondent has published a message on the website to which the disputed domain name resolves purporting to come from Complainant relating to the provision of the services of a well-known international bank.
In such circumstances this Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith and Complainant has therefore succeeded in the third and final element of the test in Policy Paragraph 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 <googel.cloud> domain name be TRANSFERRED from Respondent to Complainant.
________________________
James Bridgeman SC
Panelist
Dated: December 18, 2019
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