Google LLC v. sihao wang
Claim Number: FA2005001898320
Complainant is Google LLC ("Complainant"), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, United States. Respondent is sihao wang ("Respondent"), Illinois, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nestsale.xyz> and <nestpie.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2020; the Forum received payment on May 29, 2020.
On June 2, 2020, GoDaddy.com, LLC confirmed by email to the Forum that the <nestsale.xyz> and <nestpie.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nestsale.xyz, postmaster@nestpie.com. Also on June 3, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 has offered hardware, software, and services related to home energy, safety, and security under the NEST mark since its acquisition of Nest Labs, Inc., in 2014. Complainant states that its NEST products are sold in 23 countries and asserts that it is the leading connected home brand as measured by consumer awareness. Complainant owns numerous trademark registrations for NEST in the United States and other jurisdictions.
Respondent registered the disputed domain names <nestsale.xyz> and <nestpie.com> on May 12, 2020. The domain names are being used for websites that display Complainant's NEST mark and logo along with images of Complainant's products, and purport to offer the products for sale. Complainant states that Respondent is not authorized to use Complainant's NEST mark and is not commonly known by the disputed domain names. Complainant contends that Respondent is engaging in a fraudulent scheme to collect financial and other information from consumers who believe they are purchasing products from Complainant.
Complainant contends on the above grounds that each of the disputed domain names <nestsale.xyz> and <nestpie.com> is confusingly similar to its NEST mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Both of the disputed domain name <nestsale.xyz> and <nestpie.com> incorporate Complainant's registered NEST trademark, adding a generic or unrelated term ("sale" or "pie") and appending a top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Google LLC v. Xiuying Zeng, FA 1875222 (Forum Jan. 9, 2020) (finding <neststore.online> and <nestonline.store> confusingly similar to NEST); Nest Labs, Inc. v. Son Cao, FA 1784428 (Forum May 25, 2018) (finding <nest-hello.com> confusingly similar to NEST). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and they are being used for websites that display Complainant's mark and logo with images of Complainant's products, as part of what is alleged to be fraudulent scheme to collect information from consumers under false pretenses. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Brooks Sports, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA 1870279 (Forum Dec. 6, 2019) (finding lack of rights or interests in similar circumstances); Fossil Group, Inc. v. Jessyca Roseberry, FA 1865310 (Forum Nov. 2, 2019) (same). Even absent any fraudulent intent, Respondent's use of Complainant's mark and logo almost certainly exceed the bounds of what might be permissible as under the doctrine of nominative fair use. See, e.g., AB Electrolux v. AMR AAMER, FA 1744407 (Forum Sept. 12, 2017) (rejecting possibility of fair use in analogous circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names incorporating Complainant's mark and is using them for websites that display Complainant's mark, logo, and products in a manner seemingly calculated to create the false impression that the websites are authorized by or affiliated with Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Fossil Group, Inc. v. Jessyca Roseberry, supra (finding bad faith under similar circumstances); Arlo Technologies, Inc. v. Domain Admin / Whois Privacy Corp., FA 1862783 (Forum Oct. 17, 2019) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nestsale.xyz> and <nestpie.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 26, 2020
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