Google LLC v. sihao wang
Claim Number: FA2006001901908
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is sihao wang (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ainest.live>, <nestbee.world>, and <nesthub.site>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 30, 2020, Godaddy.Com, Llc, Go Daddy, Llc confirmed by e-mail to the Forum that the <ainest.live>, <nestbee.world>, and <nesthub.site> 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 July 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@ainest.live, postmaster@nestbee.world, postmaster@nesthub.site. Also on July 1, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 asserts that it has rights in the NEST trademark acquired though its ownership of the trademark and service mark registrations described below and its use of the mark on its Internet connected electronic home products.
Complainant submits that the NEST trademark has acquired a high degree of consumer awareness and recognition on its products which it claims are sold in 23 countries and have been installed in almost every country in the world.
Complainant submits that the disputed domain names are confusingly similar to its NEST trademark arguing that a domain name is “nearly identical or confusingly similar” to a complainant’s mark when, it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant submits that each of the disputed domain names fully incorporate Complainant’s NEST mark and add the generic terms “bee” or “ai”. (Complainant does not mention the additional term “hub” in this regard, but this may be inferred from the context.) Previous panels have found confusing similarity when a respondent merely adds a generic or descriptive term to a complainant's mark. PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant).
Complainant submits that given Respondent’s use of Complainant’s NEST mark in the disputed domain names, Respondent is engaged in a concerted effort to divert Internet users who are seeking to purchase Google’s NEST products and to deceive them into providing financial and other identifying information.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that on information and belief, Respondent is not commonly known as the disputed domain name or any name containing the NEST mark; that the WHOIS information in connection with the registration of the disputed domain name makes no mention of the disputed domain names or the NEST mark as being Respondent’s name. Complainant argues that a registrant may be found to lack any rights or legitimate interests in a domain name where there is no indication it is known by that name. See Popular Enters., LLC v. Jang, FA 0811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
Complainant furthermore asserts that it has not authorized or licensed Respondent to use any of its trademarks and argues that unlicensed, unauthorized use of a domain name incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interests in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA 1076561 (Forum Oct. 26, 2007).
Complainant furthermore submits that Respondent cannot claim that it is offering bona fide goods or services by redirecting users who are seeking Complainant’s NEST products and/or services to a website that has no affiliation with Complainant. In this regard, Complainant argues that Respondent is using the websites associated with the disputed domain names to pass itself off as an authorized retailer for Complainant’s NEST brand and is thereby engaging in deceptive and fraudulent conduct to obtain consumers’ financial and other identifying information. Prior panels have held that this type of unlawful conduct is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (“Respondent’s registration and use of the Domain Name for fraudulent and illegal activities, namely, false impersonation and theft, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use . . .”).
Even assuming arguendo that Respondent does, in fact, offer the goods listed for sale on the website associated with the disputed domain names, Complainant submits that Respondent’s use of the disputed domain names to divert Internet users for its commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Invesco Ltd. v. Rana, FA 1733167 (Forum July 10, 2017) (“[A] general intent to divert Internet users by using a domain name for commercial gain, regardless of whether respondent is a competitor of complainant, is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that at time of registration, Respondent was aware of Complainant’s rights in its NEST mark. Complainant argues that a respondent’s awareness of another’s trademark rights prior to the time the respondent registers a disputed domain name is further evidence that the respondent lacks rights or legitimate interests in that domain name. Complainant notes that the disputed domain names were recently registered on May 23, 2020, many years after Complainant established protectable and registered trademark rights in the NEST mark.
Complainant further argues that Respondent has registered the disputed domain names that wholly incorporate Complainant’s NEST mark and that resolve to websites that prominently display Complainant’s NEST branding in order to capitalize on confused Internet users who mistakenly believe that they are accessing Complainant’s official website, and Respondent has profited from the resulting confusion.
Complainant alleges that Respondent’s registration and subsequent use of the disputed domain names, despite having notice or awareness of Complainant’s trademark rights, illustrates Respondent’s lack of rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and is being used in bad faith.
Complainant refers to screenshots of webpages resolving from the disputed domain names which are exhibited with the complaint, which illustrates that when consumers visit the websites associated with the disputed domain names <nestbee.world>, <nesthub.site> and <ainest.live> and click on any of the NEST branded products listed on the homepage, they are taken to webpages displaying price information and a means to allegedly purchase the products.
Complainant points out that Respondent’s websites also solicit consumers’ contact information (including email addresses, physical addresses, and telephone numbers) and PayPal information in order to complete the purported transaction to purchase the products.
Complainant asserts that Respondent is engaging in a fraudulent scheme whereby Respondent passes itself off as Complainant in order to commercially benefit from confused consumers looking for its NEST products and services and argues that this type of deceptive conduct is the definition of bad faith. See, e.g., Smiths Group plc, FA 1372112 (“Respondent disrupts Complainant’s business by using the Domain Name to pass itself off as Complainant for Respondent’s fraudulent commercial gain.”).
In conclusion Complainant submits that Respondent has engaged in a pattern of bad faith behavior by registering multiple domains that wholly incorporate Complainant’s NEST mark alleging that Respondent is also the registrant of two additional domain names that incorporate the NEST mark namely <nestsale.xyz> and <nestpie.com>. Complainant submits that the websites associated with these additional domains are identical to the websites associated with the disputed domain names. In support of this assertion, Complainant has adduced in evidence the WHOIS records for the additional domain names and printouts of their associated websites. Complainant has prevailed in separate UDRP action against Respondent in respect of these additional domain names. see Google LLC v. sihao wang, FA2005001898320 (Forum June 26, 2020).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its predecessor in title have continuously used the NEST trademark since 2011 on electronic products, particularly Internet-connected home products, and related services, such as the NEST LEARNING thermostat, the NEST CAM camera, the NEST PROTECT smoke and carbon monoxide alarm, the NEST SECURE alarm system and the NEST HELLO video doorbell.
Complainant is the owner of a large international portfolio of trademark registrations for the NEST mark including:
· United States federal trademark registration NEST, registration number 2357817, registered on June 13, 2000 for goods in international class 16;
· United States federal trademark registration NEST, registration number 4106890, registered on Feb. 28, for goods in international class 9
· United States federal service mark registration NEST, registration number 4280353, registered on January 22, 2013 for services in international class 38; and
· United States federal service mark registration NEST, registration number 85454994 registered on January 15, 2013 for services in international class 42.
The disputed domain names <nestbee.world>, <nesthub.site> and <ainest.live> were recently registered on May 23, 2020, and resolve to the same or an identical website that purports to offer Complainant’s NEST products for sale.
The Registrar has confirmed that they are each registered in the name of Respondent.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details 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”).
Complainant has adduced convincing evidence of its rights in the NEST mark, acquired through its ownership of the abovementioned trademark and service mark registrations and its claimed extensive use of the mark on its electronic products and related services.
Each of the disputed domain names are composed of Complainant’s NEST mark in its entirety in combination with an element with no obvious meaning or is generic, together with a gTLD extension.
· In respect of <nestbee.world>, the generic element “bee” adds no distinguishing character;
· In respect of <nesthub.site>, the generic element “hub” has a generic meaning in context and adds no distinguishing character to the domain name; and
· In respect of <ainest.live> the element “ai“ may be a reference to the generic term “artificial intelligence” in context and adds no distinguishing character to the domain name.
Complainant’s NEST trademark and service mark is the dominant element and only distinctive element in each of the disputed domain names.
For the purposes of comparison the gTLDs <.world>, <.site> and <.live> extensions may be ignored in the circumstances of this Complaint because a domain extension, is recognized as a technical necessity for a domain name and they serve no other purpose or meaning in the context.
This Panel finds therefore that each of the disputed domain names are confusingly similar to the NEST mark in which Complainant has rights and has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i) in respect of each of the disputed domain names.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, arguing
· that on information and belief, Respondent is not commonly known as the disputed domain names or any name containing the NEST mark; Respondent’s WHOIS information in connection with the registration of the disputed domain names makes no mention of the disputed domain names or the NEST mark as Respondent’s name;
· that a registrant may be found to lack any rights or legitimate interests in a domain name where there is no indication it is known by that name;
· that Complainant has not authorized or licensed Respondent to use any of its trademarks and argues that unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interests in the domain name;
· that Respondent cannot claim that it is offering bona fide goods or services by redirecting users who are seeking Complainant’s NEST products and/or services to a website that has no affiliation with Complainant;
· that Respondent is using the websites associated with the disputed domain names to pass itself off as an authorized retailer for Complainant’s NEST brand and is thereby engaging in deceptive and fraudulent conduct to obtain consumers’ financial and other identifying information and such unlawful conduct is not a bona fide offering of goods or services or a legitimate noncommercial or fair use;
· that even assuming arguendo that Respondent does, in fact, offer the goods listed for sale on the website associated with the disputed domain names such use by Respondent to divert Internet users for its commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, it could be argued that Complainant has alleged but has not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods and that the goods presented on Respondent’s website appear not to be Complainant’s genuine trademarked goods.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this proceeding, each of the the disputed domain names resolves to an identical website that presents and purports to offer Complainant’s NEST branded goods for sale at hugely discounted prices, and prominently displays Complainant’s mark without license or authority. There is nothing in text and other content of the website to show that Respondent is not connected with Complainant and in fact the presentation and content seems to misrepresent to the public that the website is owned by, has a connection with, or is endorsed by Complainant. The website therefore does not accurately disclose that Respondent has in fact no relationship with Complainant. Additionally, Respondent has not responded to these allegations. In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s allegations that the disputed domain name was registered and is being used in bad faith must be viewed in the context that Respondent has been the unsuccessful respondent in earlier proceedings under the Policy as registrant of two additional domain names that incorporate the NEST mark namely <nestsale.xyz> and <nestpie.com>.
In this proceeding, Complainant’s NEST mark is the dominant element in each of the disputed domain names; each of the disputed domain names was registered ion the same date on May 23, 2020, many years after Complainant established protectable and registered trademark rights in the NEST mark; each of the disputed domain names is owned by Respondent; and each of the disputed domain names resolve to the same or an identical website, that purports to offer Complainant’s goods and services at hugely discounted prices.
On the balance of probabilities therefore the registrant of each of the disputed domain names was aware of Complainant’s rights in its NEST mark and registered each of them to target Complainant and to take predatory advantage of Complainant’s reputation and goodwill in the mark.
Respondent’s subsequent use of the disputed domain names to resolve to the same, or an identical website, that purportedly to presents itself as being authorized by, or having an association with, Complainant, in these circumstances show that on the balance of probabilities each of the disputed domain names was registered and is being used in bad faith.
Complainant has made an assertion, but has adduced no evidence that Respondent is engaged in a fraudulent scheme whereby Respondent passes itself off as Complainant in order to commercially benefit from confused consumers looking for its NEST products. This Panel makes no finding in that regard.
This Panel finds therefore that on the balance of probabilities, that Respondent is using each of the disputed domain names that are confusingly similar to Complainant’s NEST mark, in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site and is therefore using each of the disputed domain names in bad faith.
As this Panel has found that each of the disputed domain names was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ainest.live>, <nestbee.world>, and <nesthub.site> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Dated: July 25, 2020
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