Google LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1912001875862
Complainant is Google LLC (“Complainant”), represented by Hoang-chi Truong of Patent Law Works LLP, Utah. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chromecasthelpline.com>, registered with Internet Domain Service BS Corp.
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 December 18, 2019; the Forum received payment on December 18, 2019.
On December 23, 2019, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <chromecasthelpline.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 December 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2020 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@chromecasthelpline.com. Also on December 27, 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.
No response having been received from Respondent, the Forum transmitted to the Parties a Notification of Respondent Default.
On January 18, 2020 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its claimed rights in the CHROMECAST trademark established by its international portfolio of trademark registrations described below and the goodwill that it has established in the mark by its extensive use across the world.
Complainant submits that it announced its CHROMECAST media player on July 24, 2013. The media player is categorized as a dongle that can be accessed by plugging the device into the HDMI port and it mirrors any Android app onto any HDMI-compatible television or monitor.
Subsequently, on October 4, 2016, the CHROMECAST ULTRA media player with additional features was launched by Complainant in a number of jurisdictions across the world. By July 2016 sales of the CHROMECAST and CHROMECAST ULTRA products had reached had 30 million units.
Complainant submits that the disputed domain name is confusingly similar to its CHROMECAST trademark as it incorporates the CHROMECAST mark in its entirety. Complainant submits that the disputed domain name merely adds the non-distinctive term “helpline” and the <.com> gTLD extension to the CHROMECAST mark. Complainant argues that the additional elements do not diminish the confusingly similar character of the disputed domain name. See, e.g., Google Inc. v. Kun Zhang, FA0901001245131 (Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the <googlevideodownload.com> domain name).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not known by the CHROMECAST name, nor has Complainant authorized or licensed Respondent to use the CHROMECAST trademark or name. Complainant submits that such unlicensed, unauthorized use of a domain name incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Forum Oct. 26, 2007); Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where respondent used complainant’s mark without authorization to attract Internet users to its website).
Moreover, Complainant adds that the disputed domain name resolves to a commercial website that purports to offer services related to Complainant’s CHROMECAST media player. Complainant submits that by using the CHROMECAST mark in connection with commercial services related to Complainant’s offering under the same mark, “Respondent has not been using the . . .[D]omain [N]ame in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.” See Yahoo! Inc. v. Mohit Arora / E-squad Tech., FA1311001531666 (Forum Dec. 31, 2013) (transferring <yahootechnicalhelp.com>).
Complainant submits that the disputed domain name was registered in bad faith on March 14, 2016, well after Complainant acquired protectable rights in the CHROMECAST mark. Complainant argues that based on the content of the website associated with the disputed domain name, it is clear that Respondent did not create the disputed domain name independently but that the disputed domain name was registered with a willful intent to violate Complainant’s intellectual property rights.
Given Respondent’s registration of the disputed domain name that consists almost entirely of the CHROMECAST mark, Complainant submits that it is impossible to conceive of any potential legitimate use of the disputed domain name.
Complainant submits that Respondent is using the disputed domain name “to resolve to a website at which Complainant’s trademark [is] prominently displayed. . . . with full knowledge of Complainant’s business and trademarks.” Am. Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com, FA0203000105890 (Forum May 31, 2002). Complainant argues that such conduct is indicative of bad faith.
Moreover, Complainant submits that Respondent is holding itself out as a tech support service provider for Complainant’s CHROMECAST device. Complainant has furnished a screenshot of the homepage of the website to which the disputed domain name resolves, which prominently displays the trademark CHROMECAST with the word “Helpline” underneath in smaller font, with a large photo of a CHROMECAST media player. Complainant complains that nowhere on the website does Respondent identify itself, making it appear as though it may be related or affiliated with Complainant.
Although Respondent includes a disclaimer that it has “no association with the company, brands, trademarks, products and services that are listed on our website” (at https://www.chromecasthelpline.com/disclaimer/), such disclaimer is hidden on one of the web pages under “Resources”. Complainant submits that this illustrates that Respondent is actively hiding its identity from the public, hoping that consumers would assume a relationship with Complainant. Furthermore, Respondent misleadingly provides a link to the Google Cast app under https://www.chromecasthelpline.com/download-google-cast/ but, when users click on that link on Google Play, it links users to a third-party app, instead of Complainant’s official app.
Complainant submits that it is clear that Respondent is using the disputed domain name in bad faith in an attempt to pass itself off as Complainant.
Additionally, Complainant complains that Respondent uses the disputed domain name in connection with a commercial website that ostensibly charges customers for assistance with Complainant’s product offered under the CHROMECAST mark.
On its face, Respondent’s website appears to provide information, in a blog format, about Complainant’s CHROMECAST media player, but the clear intent is to solicit customers to Respondent’s tech support services where it charges customers to assist them with CHROMECAST issues, which Complainant provides free of charge. Respondent’s telephone number is prominently displayed on each web page to garner the attention of customers; hence, Respondent’s website is not merely to provide information about Complainant’s products but is a guise for Respondent’s own tech support services.
Complainant has adduced evidence in the form of a transcription of a complaint to its call center from a confused customer who, needing assistance with a CHROMECAST device, phoned the number provided by Respondent on its website. The customer was asked by Respondent to provide personal information, including credit card details, with Respondent sometimes requesting access to consumers’ computers remotely. An internet search shows that Respondent’s phone number is also associated with tech support services for named third-party services.Complainant’s association with the resolving site. See Yahoo! Inc. v. Carlos, FA1201001425174 (Forum Mar. 19, 2012). Complainant states that it provides its tech support services for the CHROMECAST product free of charge.
The transcript shows that the customer was told that his registration had lapsed and that he had to pay $100 on my debit card for more to be reregistered. When Respondent or its agents requested payment information, the customer was on alert that Respondent may be operating a scam to access their credit or debit card. The customer called Complainant’s call center to complain and identified Respondent by its phone number. Complainant submits that such activity, whereby Respondent is deriving a profit from consumer confusion, is evidence of bad faith registration and use of the disputed domain name under the Policy. See AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, Case No. D2002-0440 (WIPO Aug. 28, 2002) (finding bad faith registration and use where respondent’s use of domain names confusingly similar to complainant’s marks was for the purpose of commercial gain).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has an extensive world-wide business providing web browsers and other services on the Internet. Among the products offered by Complainant is the CHROMECAST digital media player which enables streaming of audio and video content on high definition televisions and home audio systems. Complainant owns numerous trademark registrations and applications for the CHROMECAST and similar trademarks including
• Benelux registered trademark CHROMECAST registration
number 952181 registered on February 25, 2014 for goods and services in classes 9 and 42.
• United States CHROMECAST registration number 5530415 registered on
July 31, 2018 for goods and services in international classes 9 and 42.
The disputed domain name was registered on March 14, 2016 and resolves to a website offering information and tech support on Complainant’s CHROMECAST device. The Registrar’s Whois records Respondent as the registrant.
No Response has been filed and so the only information available about Respondent is that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details for the disputed domain name in the course of this Complaint.
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 uncontested evidence of its claimed rights in the CHROMECAST trademark acquired through its abovementioned portfolio of registered trademarks and its extensive international use of the mark in association with its media player goods and services since July 24, 2013.
The disputed domain name consists of Complainant’s CHROMECAST mark in its entirety in combination with the descriptive term “helpline” and the gTLG <.com> extension. The initial, dominant and only distinctive element of the disputed domain name is Complainant’s trademark. The descriptive element gives no distinguishing difference to the confusingly similar character of the disputed domain name and the gTLD <.com> extension may be ignored in the circumstances of this present case for the purposes of comparison.
This Panel finds therefore that the disputed domain name is confusingly similar to the CHROMECAST trademark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not known by the Chromecast name; that Complainant has not authorized or licensed Respondent to use the CHROMECAST trademark or name; that such unlicensed, unauthorized use of the disputed domain name that incorporates Complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the domain name. Complainant adds that the disputed domain name resolves to commercial website for a business that purports to offer services related to Complainant’s CHROMECAST media player and argues that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In such circumstances the burden of production shifts to Respondent to establish its rights or legitimate interests. No Response has been submitted and therefore Respondent has failed to discharge the burden. In such circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
As Complainant has argued, it is impossible to conceive of any potential legitimate use of the disputed domain name other than to take predatory advantage of Complainant’s name, mark and goodwill. The disputed domain name was registered on March 14, 2016 long after Complainant launched it CHROMECAST product on July 24, 2013 with global success.
On the evidence adduced, Respondent is using Complainant’s trademark as the dominant and distinctive element in the disputed domain name to lure Internet users to Respondent’s website, passing itself off as Complainant and in order to charge unsuspecting customers of Complainant for the provision of services which Complainant is offering free of charge. Complainant has adduced evidence of correspondence from such customers.
On the evidence adduced, as Complainant has submitted, the disclaimer that Respondent has posted on the website to which the disputed domain name resolves, that it has “no association with the company, brands, trademarks, products and services that are listed on our website” is hidden on one of the web pages under “Resources”. This Panel accepts Complainant’s submission that by placing the disclaimer on such a remote part of its website, Respondent was eager to ensure that the disclaimer would not be noticed.
Further evidence of Respondent’s bad faith is that the website to which the disputed domain name resolves purports to provide Internet users with a link to a download of Complainant’s GOOGLECAST app. However, when users click on that link on Google Play, it links users to a third-party app instead.
This Panel finds therefore that by using the disputed domain name in such fashion Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and a product or service on Respondent’s web site.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chromecasthelpline.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________
James Bridgeman SC
Panelist
Dated: January 20, 2020
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