Google LLC v. Dns Admin / Google Inc.
Claim Number: FA2003001888471
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, USA. Respondent is Dns Admin / Google Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlestatisticalserver.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2020; the Forum received payment on March 16, 2020.
On March 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlestatisticalserver.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@googlestatisticalserver.com. Also on March 19, 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 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Google LLC, is one of the most highly recognized and widely used Internet search services in the world. Complainant has rights in the GOOGLE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered January 20, 2004). See Compl. Exhibit 7. Respondent’s <googlestatisticalserver.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s GOOGLE mark and adds the generic terms “statistical” and “server.”
Respondent does not have rights or legitimate interests in the <googlestatisticalserver.com> 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 does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and redirect users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant. Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <googlestatisticalserver.com> domain name in bad faith. Respondent makes no active use of the disputed domain name. Respondent had actual or constructive knowledge or Complainant’s rights in the GOOGLE mark when registering the domain name, as shown through Respondent’s use of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that operates a prominent search engine service and provides related goods and services.
2. Complainant has established its trademark rights in the GOOGLE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered January 20, 2004).
3. Respondent registered the <googlestatisticalserver.com> domain name on June 21, 2016.
4. Respondent uses the disputed domain name to pass itself off as Complainant and redirect users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant and which introduces malware. Respondent otherwise fails to make an active use of the disputed 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GOOGLE mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 2,806,075, registered January 20, 2004). See Compl. Ex. 7. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of registration of the GOOGLE mark with the USPTO, therefore, the Panel finds that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent’s <googlestatisticalserver.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s GOOGLE mark, adding the generic words “statistical” and “server” to the mark. The Panel notes that Respondent also adds a “.com” generic top-level domain (“gTLD”). The addition of generic words and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain name is confusingly similar to the GOOGLE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GOOGLE trademark and to use it in its domain name, adding the generic words “statistical” and “server” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <googlestatisticalserver.com> domain name on June 21, 2016;
(c) Respondent uses the disputed domain name to pass itself off as Complainant and redirect users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant and introduces malware. Respondent otherwise fails to make an active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <googlestatisticalserver.com> domain name because Respondent is not authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not 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). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Dns Admin / Google Inc.” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the GOOGLE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to mislead consumers and direct them to the website they may believe is affiliated with Complainant and which introduces malware. Use of a disputed domain name to divert web users to a respondent’s site and confusing them into believing that some sort of affiliation with a complainant exists will not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Here, Respondent’s use of the GOOGLE mark is misleading because users are not in fact directed to Complainant’s products or services. Thus, the Panel finds that Respondent’s use of the domain name indicates it lacks right and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent is inactively holding the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC , FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)”). Here, Complainant has provided a screenshot of Respondent’s inactive web page which states, “This site can’t be reached.” See Compl. Ex. 8. The Panel agrees with Complainant that this use does not amount to a bona fide offering of good or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, arguments that would fall under Policy ¶ 4(b) are merely illustrative rather than exclusive to support a finding of bad faith and Complainant is therefore correct in submitting that “(t)he evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name in bad faith.” See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Thus, the Panel finds that the matters raised by the Complainant’s Policy ¶ 4(a)(iii) submissions are sufficient to demonstrate bad faith.
Secondly, Complainant argues that Respondent has registered and uses the <googlestatisticalserver.com> domain name in bad faith. Complainant submits that Respondent fails to make an active use and is passively holding the disputed domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”). As noted previously, Complainant provides screenshots of the disputed domain name which resolves to an inactive website. See Compl. Ex. 8. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the GOOGLE mark when registering the disputed domain name and this shows bad faith. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown to be bad faith 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”). Actual knowledge of a mark can be established by showing the fame and notoriety of the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights prior to registration due to the notoriety of the mark. The GOOGLE mark was found to be one of the top five Best Global Brands throughout the last several years and its website has been recognized as one of the most popular destinations on the Internet for many years. As the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GOOGLE mark and in view of the conduct that Respondent has engaged in since registering the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlestatisticalserver.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2020
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