DECISION

 

Google LLC v. Lei Shi

Claim Number: FA2003001890116

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.

 

On May 6, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names.  Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 May 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@covid19google.com, postmaster@googlecovod19.com, postmaster@googlecpvid19.com.  Also on May 6, 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 June 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Google LLC, is one of the most highly recognized and widely used Internet search services in the world. The search engine maintains one of the world’s most impressive collections of indexed online content. 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 <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s GOOGLE mark and adds the generic term “covid19,” and other misspellings of the term such as “covod19” and “cpvid19.”

 

2.    Respondent does not have rights or legitimate interests in the <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names. 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 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.

 

3.    Respondent registered and uses the <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names in bad faith. Respondent has 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. Respondent registered the disputed domain name in an act of opportunistic bad faith.

 

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names are confusingly similar to Complainant’s GOOGLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names.

 

3.    Respondent registered or used the <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names 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”).

 

Identical and/or Confusingly Similar

Complainant asserts 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 the rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <covid19google.com>, <googlecovod19.com> and <googlecpvid19.com> domain names is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s GOOGLE mark and adds the generic term “covid19,” and other misspellings of the term such as “covod19” and “cpvid19.”  The Panel notes that while Complainant does not argue this, Respondent also adds a “.com” generic top-level domain (“gTLD”). The addition of a generic word and a gTLD to a mark may 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).

 

Rights or Legitimate Interests

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”).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <covid19google.com>, <googlecovod19.com>, and <googlecpvid19.com> domain names 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 H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Lei Shi” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the GOOGLE mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of good 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. 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 may 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)”). Here, Complainant argues that Respondent’s use of the GOOGLE mark is misleading because users are not in fact directed to Complainant’s products or services but rather to websites that pass off as Complainant. See Compl. Ex. 8. Thus, the Panel agrees 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).

 

Registration and Use in Bad Faith

While Complainant makes no arguments that would fall under Policy ¶ 4(b), such arguments are merely illustrative rather than exclusive to support a finding of 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 Complainant’s Policy ¶ 4(a)(iii) are sufficient to demonstrate bad faith.

 

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. Further, Respondent’s opportunistic actions provide evidence of actual knowledge.   The Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent’s registration and use of the disputed domain name is clear evidence of opportunistic bad faith. When a respondent registers a disputed domain name in close temporal proximity of an event, it may be evidence of opportunistic bad faith under Policy ¶ 4(a)(iii). See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Here, Complainant argues that Respondent registered the disputed domain name on March 13, 2020, President Trump announced Complainant would be building a website to provide information concerning the coronavirus. Respondent registered the domain name in an attempt to maliciously misdirect and divert unsuspecting internet users seeking critical health information concerning the global coronavirus pandemic. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

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 <covid19google.com>, <googlecovod19.com>, and <googlecpvid19.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 15, 2020

 

 

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