Google LLC v. Jansen Favero / Publy Comunicacao

Claim Number: FA1910001868080



Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, USA.  Respondent is Jansen Favero / Publy Comunicacao (“Respondent”), Brazil.



The domain name at issue is <>, registered with PDR Ltd. d/b/a



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.


Richard Hill as Panelist.



Complainant submitted a Complaint to the Forum electronically on October 22, 2019; the Forum received payment on October 22, 2019.


On October 23, 2019, PDR Ltd. d/b/a confirmed by e-mail to the Forum that the <> domain name is registered with PDR Ltd. d/b/a and that Respondent is the current registrant of the name. PDR Ltd. d/b/a has verified that Respondent is bound by the PDR Ltd. d/b/a 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 October 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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  Also on October 23, 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. Respondent did however send an e-mail to the Forum, see below.


On November 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that the GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search services in the world. Complainant has rights in the GOOGLE mark through its registration in the United States in 2004. The mark is registered elsewhere around the world. The GOGGLE Mark was found to be one of the top five Best Global Brands throughout the last several years. In fact, on February 1, 2017, the Brand Finance Global 500, which identifies the world's most valuable brands, ranked GOOGLE as the most valuable brand in the world. The mark is famous.


Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE mark as it contains the mark in its entirety and merely adds the generic term “negocio,” which is Spanish for “business.” 


According to Complainant, 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 fair use. Instead, Respondent uses the disputed domain name to direct internet users to a webpage that purports to provide a "free review of your business" under the "G Business" name. In addition to prominently featuring the GOOGLE Mark, the website is replete with unauthorized uses of various Complainant trademarks, and misleads users into believing that they are somehow utilizing or receiving Complainant-sponsored goods and services when, in fact, they are not. This is particularly true because the website includes a copyright notice for "Google Business Brazil." The business services and "reviews" offered on the resolving website to unsuspecting Internet users are not authorized by Complainant.


Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark.


B. Respondent

Respondent failed to submit a Response in this proceeding. In its e-mail to the Forum, Respondent states:


Thanks in advance for the contact, I understand the situation and I reaffirm with great conviction that we never had the intention of using Google's name to deceive anyone, on the contrary, in fact we advise small and medium local businesses, and the creation of the domain was with the goal of creating a more accessible channel local entrepreneurs could find helps more easily expand their digital presence with Google.


However, in accordance with the reasons given, we will delete that domain ( as well as any other Google proprietary name or trademark.



For the reasons set forth below, the Panel will not make any findings of fact.



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.


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."


The Panel finds that Respondent’s e-mail to the Forum amounts to an agreement to transfer the disputed domain name to Complainant. Therefore, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.


See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).


Identical and/or Confusingly Similar

For the reasons set forth above, the Panel will not analyze this element of the Policy.


Rights or Legitimate Interests

For the reasons set forth above, the Panel will not analyze this element of the Policy.


Registration and Use in Bad Faith

For the reasons set forth above, the Panel will not analyze this element of the Policy.



Given the common request of the Parties, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



Richard Hill, Panelist

Dated:  November 14, 2019



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