Google LLC v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA2001001879161
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, United States. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ssl-google-analytics.com>, registered with Dynadot, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2020; the Forum received payment on January 16, 2020.
On January 16, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <ssl-google-analytics.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 January 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@ssl-google-analytics.com. Also on January 17, 2020, 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 February 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Google LLC, is one of the most widely used search engines in the world. Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,884,502 registered on September 14, 2004). Respondent’s <ssl-google-analytics.com> domain name is confusingly similar to Complainant’s GOOGLE mark as it includes the mark in its entirety, adds the generic terms “analytics” and “ssl” (which presumably stands for “secure sockets layer”), and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <ssl-google-analytics.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a page where Respondent passes off as Complainant and distributes malware to Internet users’ computers.
Respondent registered and uses the <ssl-google-analytics.com> domain name in bad faith. Specifically, Respondent does not make active use of the disputed domain name. Further, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to its registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <ssl-google-analytics.com> domain name.
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 proved this element.
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 finds Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <ssl-google-analytics.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s GOOGLE mark. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). A privacy service was used by Respondent, and as a result, the WHOIS information for the disputed domain name lists the registrant as “Super Privacy Service LTD c/o Dynadot.” There is no other evidence to suggest that Respondent was authorized to use the GOOGLE marks. The Panel finds that Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Complainant argues Respondent fails to use the <ssl-google-analytics.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Specifically, Respondent uses the disputed domain name to pass off as Complainant by redirecting users seeking Complainant’s products to a website that has no affiliation with Complainant. A respondent’s use of a disputed domain name to pass off as a complainant is not a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant provides a screenshot of Respondent’s disputed domain name, which resolves to an inactive webpage stating “404 Not Found.” The Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent fails to use the <ssl-google-analytics.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s disputed domain name may distribute malware to Internet users’ computers. A respondent’s use of a disputed domain name to distribute malware may not constitute a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the VirusTotal results for Respondent’s disputed domain name, which demonstrates that Respondent may use the disputed domain name to distribute malicious software onto Internet users’ computers. The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <ssl-google-analytics.com> domain name in bad faith. Specifically, Respondent is merely passively holding the disputed domain name, as the resolving webpage states “404 Not Found.” A respondent’s inactive holding of a disputed domain name may evince bad faith pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) the respondent failed to use the domain name and (2) it is clear that the respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the complainant). Complainant provides a screenshot of Respondent’s disputed domain name, which resolves to an inactive webpage stating “404 Not Found.” This is evidence that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark when the <ssl-google-analytics.com> domain name was registered. Actual knowledge is sufficient and may be proven through a totality of circumstances per 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.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues Respondent’s actual knowledge of Complainant’s rights in the GOOGLE mark is demonstrated by its use of the famous GOOGLE mark to confuse Internet users and attract them to Respondent’s domain name. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ssl-google-analytics.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
February 19, 2020
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