Google LLC v. ZhangWei / S Jon Grant / jerry
Claim Number: FA2005001896568
Complainant is Google LLC (“Complainant”), represented by Brian J. Focarino of Cooley LLP, United States. Respondent is ZhangWei / S Jon Grant / jerry (“Respondent”), China
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org>, registered with 22net, Inc.; 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.
The Honourable Neil Anthony Brown QC as Panelist.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that it is clear from the pattern of activity on each of the domain names that the same entity registered the different domain names. The Panel agrees.
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the matter may therefore go forward on that basis.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. The Panel has reviewed the applicable rules on language of the proceedings under the UDRP:
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.
Complainant submitted a Complaint to the Forum electronically on May 15, 2020; the Forum received payment on May 15, 2020. The Complaint was submitted in both Chinese and English.
On Jun 16, 2020; Jun 17, 2020, 22net, Inc.; Dynadot, LLC confirmed by e-mail to the Forum that the<googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names are registered with 22net, Inc.; Dynadot, LLC and that Respondent is the current registrant of the names. 22net, Inc.; Dynadot, LLC has verified that Respondent is bound by the 22net, Inc.; 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 June 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@googleclassroom.co, postmaster@googleclassroom.info, postmaster@googleclassroom.org. Also on June 22, 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 July 20, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, operates a highly recognized and widely used Internet search service. 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). See Compl. Ex. 7. Respondent’s <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names are nearly identical and confusingly similar to Complainant’s mark because they each fully incorporate the GOOGLE mark, merely adding the generic word “classroom” and a top-level domain (“TLD”).
Respondent does not have rights or legitimate interests in the <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names because Respondent is not licensed or authorized to use the Complainant’s GOOGLE mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant and redirects users to unrelated websites.
Respondent registered and uses the <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names in bad faith because Respondent fails to make any active use of the disputed domain names. Additionally, Respondent registered the disputed domain names with knowledge of Complainant’s rights in the GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a highly recognized and widely used Internet search service.
2. Complainant has established its trademark rights in the GOOGLE mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004).
3. Respondent registered the <googleclassroom.org> domain name on August 20, 2014, the <googleclassroom.co> domain name on December 8, 2019, and the <googleclassroom.info> domain name February 13, 2020.
4. Respondent passes itself off as Complainant and redirects users to unrelated websites.
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 the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the GOOGLE mark with the USPTO (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). See Compl. Ex. 7. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent’s <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names are nearly identical and confusingly similar to Complainant’s mark because they each fully incorporate the GOOGLE mark, merely adding the generic word “classroom” and a TLD. Addition of a generic or descriptive term and a TLD is insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel agrees with Complainant that the disputed domain names are 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 names 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”).
(a) Respondent has chosen to take Complainant’s GOOGLE trademark and to use it in its domain names, merely adding the generic word “classroom” which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <googleclassroom.org> domain name on August 20, 2014, the <googleclassroom.co> domain name on December 8, 2019, and the <googleclassroom.info> domain name February 13, 2020;
(c) Respondent passes itself off as Complainant and redirects users to unrelated websites;
(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 <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names because Respondent is not licensed or authorized to use the Complainant’s GOOGLE mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that name. 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 identifies the registrants of the disputed domain names as “Zhangwei / S Jon Grant / Jerry” and no information indicates that Complainant authorized Respondent to use the mark. See Amend. Compl. Ex. 4. Therefore, the panel finds that Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather passes itself off as Complainant and redirects users to unrelated websites. Use of a confusingly similar domain name to redirect Internet traffic is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant argues that Respondent uses Complainant’s mark to suggest an affiliation with Complainant and redirects those searching for Complainant to unrelated websites. Complainant provides screenshots of the websites to which users are redirected and notes that the sites generally seem to prompt users to download browser extensions. See Compl. Ex. 8. Thus, the Panel agrees that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names in bad faith because Respondent appropriates Complainant’s mark and fails to make any active use of the disputed domain names. Passive holding of a disputed domain name may constitute bad faith registration and use under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant notes that while the disputed domain names redirect users to unrelated webpages, there are no active webpages at the disputed domain names. As the Panel agrees that this constitutes passive holding, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Secondly, Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the GOOGLE mark. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and may be shown by the mark’s fame and notoriety. See 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 that the fame and unique qualities of the GOOGLE mark make it wholly implausible that Respondent created the disputed domain names independently. As the Panel agrees, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
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 <googleclassroom.co>, <googleclassroom.info>, and <googleclassroom.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 21, 2020
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