Google LLC v. Scott Epple / Sophos
Claim Number: FA2002001885664
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, United States. Respondent is Scott Epple / Sophos (“Respondent”), Massachusetts, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goog1e-mail.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2020; the Forum received payment on February 26, 2020.
On February 26, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <goog1e-mail.com> 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 March 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@goog1e-mail.com. Also on March 3, 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 March 27, 2020, 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 it provides easy to use 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. 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 of the mark in the United States in 2004. The mark is registered elsewhere around the world and it is famous. The GOOGLE 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.
Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE mark, as it replaces the letter “l” with the numeral “1” in the mark and adds a hyphen, the generic term mail, and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its GOOGLE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant and redirects internet users to a webpage that is unrelated to Complainant’s services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainant and disrupt Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the disputed domain name due to the fame of the mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GOOGLE and uses it to market search tools and other Internet-related services.
Complainant’s rights in its mark date back to at least 2004. The mark is famous.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a website that offers services not related to Complainant.
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”).
The disputed domain name consists of Complainant’s GOOGLE mark, with the letter “l” replaced by the numeral “1”, plus a hyphen, the generic term mail, and the “.com” generic top-level domain (“gTLD”). Registration of a domain name that includes a generic word, a hyphen, replacement of a letter with a numeral and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Agilent Technologies, Inc. v. Alan Ram, FA1875383 (Forum Jan. 9, 2020) (“Respondent’s <ag1lent.com> domain name incorporates Complainant’s AGILENT mark with a “1” in place of the mark’s “I”, all followed by the generic top-level domain “.com”. Under the Policy these differences do nothing to distinguish the at-issue domain name from Complainant’s trademark.”); see also Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (finding that replacing the instances of the letter “o” with the number “0” in the domain name <marlb0r0.us> does not distinguish the domain name from the mark because “replacing letters with similar looking numbers does not sufficiently distinguish disputed domain names from marks.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also nnomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Scott Epple / Sophos”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website offers Respondent’s services, which are not related to Complainant or to Complainant’s products or services. This is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); see also Google Inc. v. Monika Patel, FA1661784 (Forum March 31, 2016) (No rights or legitimate interests where the respondent used the domain name in connection with “a website purporting to advertise the commercial services of” a third party and which “contain[ed] hyperlinks to Internet-related services of competing companies.”); see also Google Inc. v. Mahmut Karaca / Karaca Grup Ltd. Sti., FA1682647 (Forum Jul. 25, 2016) (“Respondent’s use of the confusingly similar domain name to divert Internet users to its own website is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website promotes services unrelated to Complainant’s business. Such use of a domain name can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); see also Google LLC v. Raj Shekhar, FA1779541 (Forum Apr. 27, 2018) (“Respondent registered a domain name incorporating Complainant's well-known mark without authorization, and is using it for a website that . . . presumably benefits Respondent commercially . . . . Respondent's actions are indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.”). The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goog1e-mail.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 27, 2020
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