DECISION

 

Google LLC v. Li Yan Zheng

Claim Number: FA2002001882972

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, USA. Respondent is Li Yan Zheng (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ggoogle.top> (the “disputed domain name”), registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Lynda M. Braun, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020. The Complaint was submitted in both Chinese and English.

 

On March 10, 2020, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <ggoogle.top> disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 March 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@ggoogle.top.  Also on March 13, 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 April 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant, Google LLC, has become one of the most highly recognized and widely used Internet search services in the world. Complainant has rights in the GOOGLE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004) and The Trademark Office of National Intellectual Property Administration of China (e.g. Reg. No. 5556520, registered on Dec. 7, 2009) (hereinafter, collectively, the “GOOGLE Mark”).

 

The disputed domain name was registered on February 2, 2019. The disputed domain name is confusingly similar to Complainant’s mark as Respondent, merely adds the letter “g” and the “.top” generic top-level domain (“gTLD”), which results in a misspelling of the GOOGLE Mark.

 

Respondent does not have rights or legitimate interests in the <ggoogle.top> domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE Mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <ggoogle.top> disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name. In addition, Respondent uses the disputed domain name to download malware on Internet users’ computers.

 

Respondent registered and is using the <ggoogle.top> domain name in bad faith. Respondent attempts to confuse Internet users and to attract them to its own website, which is passively held and contains malware. Finally, Respondent had actual knowledge of Complainant’s GOOGLE mark when it registered the <ggoogle.top> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds valid trademark rights in the GOOGLE Mark.  The Disputed Domain Name is confusingly similar to Complainant’s GOOGLE Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.

 

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”).

 

Preliminary Issue: Language of the Proceedings

Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese, in accordance with UDRP Rule 11(a).

 

However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (Forum Mar. 3, 2020) (deciding that the proceedings may be conducted in English without prejudice to the Respondent, because the Forum provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case).

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

Identical and/or Confusingly Similar

The Panel concludes that Complainant has shown to have rights in the GOOGLE Mark based upon registration of the marks with the USPTO and The Trademark Office of National Intellectual Property Administration in China. (as well as with dozens of other jurisdictions’ trademark offices worldwide). Registration of a mark with governmental trademark authorities is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).

 

The Panel also concludes that the disputed domain name is confusingly similar to the GOOGLE Mark under the Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s GOOGLE Mark in its entirety, with the addition of the letter “g”, followed by the gTLD “.top”. This minor misspelling of GOOGLE (adding an extra “g”)[i], or typosquatting, and followed by the “.top” generic Top-Level Domain (“gTLD”) does not defeat a finding of confusing similarity or identity. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).

 

Specifically, slight variations to a mark caused by addition and/or deletion of letters and addition of a gTLD are generally insufficient to overcome confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). Thus. the Panel concludes that the <ggoogle.top> disputed domain name is confusingly similar to the GOOGLE Mark.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).

 

As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:

 

To wit, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the GOOGLE Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant has not authorized Respondent to use the GOOGLE Mark in any way.

 

Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

First, Respondent has registered and uses the <ggoogle.top> disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Respondent created a likelihood of confusion with Complainant and its GOOGLE Mark by registering a disputed domain name that incorporates in its entirety Complainant’s GOOGLE Mark, with the exception of an additional letter “g”.

 

Second, the fame of the GOOGLE Mark, which was adopted by Complainant far in advance of the Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the GOOGLE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). As noted above, the GOOGLE Mark is widely known worldwide. Respondent registered the disputed domain name on February 2, 2019, years after the GOOGLE Mark was first used in commerce. It therefore strains credulity to believe that Respondent had not known of the Complainant or its GOOGLE Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ggoogle.top> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

 

Lynda M. Braun, Panelist

Dated:  April 12, 2020



[i] This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark.

 

 

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