Google LLC v. nicolas villamil
Claim Number: FA2007001906134
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is nicolas villamil (“Respondent”), Uruguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mail-account-gmail.com>, registered with Name.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2020; the Forum received payment on July 27, 2020.
On July 28, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <mail-account-gmail.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@mail-account-gmail.com. Also on July 31, 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 August 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Google LLC, is one of the most highly recognized and widely used internet search services in the world.
Complainant has rights in the GMAIL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <mail-account-gmail.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s GMAIL mark and adds the generic terms “mail” and “account” along with hyphens and a “.com” generic top-level domain (“gTLD’).
Respondent does not have rights or legitimate interests in the <mail-account-gmail.com> domain name. Respondent is not licensed or authorized to use Complainant’s GMAIL mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to falsely associate itself with Complainant, conduct phishing schemes, and defraud Complainant’s customers.
Respondent registered and uses the <mail-account-gmail.com> domain name in bad faith. Respondent uses the at-issue domain name to engage in a phishing scheme. Further, Respondent has actual or constructive knowledge or Complainant’s rights in the GMAIL 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.
Complainant has rights in the GMAIL mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its GMAIL trademark.
Respondent uses the <mail-account-gmail.com> domain name to falsely associate itself with Complainant in furtherance of a phishing scheme.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the GMAIL mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i).. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent forms the at-issue domain name domain name by prefixing the Complainant’s GMAIL trademark with the suggestive term “mail” a hyphen and the suggestive term “account” and another hyphen following all with the top-level domain name “.com.” The differences between Complainant’s trademark and the at-issue domain name are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that the <mail-account-gmail.com> domain name is confusingly similar to Complainant’s GMAIL trademark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “nicolas villamil” as the domain name’s registrant and there is nothing in the record that otherwise shows Respondent is commonly known by <mail-account-gmail.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <mail-account-gmail.com> domain name addresses a website offering login prompts. Once drawn to the website via its confusingly similar domain name and the domain name’s overt reference to Complainant’s GMAIL mail accounts, users may, in their confusion, attempt to login to their own GMAIL accounts using their proprietary credentials. However rather than actually being logged in to GMAIL via the website’s prompts (or even if they were to be actually logged in), the visitors’ credentials are captured by Respondent. Moreover, it would be trivial for Respondent to dress its website up to more closely appear to be a proper GMAIL login page. Using the at-issue domain name in this manner 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 DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the <mail-account-gmail.com> domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to initially pass itself off as Complainant so that it might trick website visitors into believing they are dealing with Complainant when they are not. Once on the <mail-account-gmail.com> website, the wayward visitors are confronted with a login page which apparently is aimed solely at capturing their actual GMAIL credentials. Respondent’s use of the at-issue domain name in this manner demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The fact that Respondent uses the confusingly similar domain name to facilitate a phishing scheme in itself indicates Respondent’s bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent registered the at-issue domain name knowing that Complainant had trademark rights in the GMAIL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the inclusion of terms suggestive of Complainant’s mark and related services in the domain name, and from Respondent’s scheme to extract the login credentials of visitors to the <mail-account-gmail.com> website. Indeed, Respondent’s domain name is such an obvious reference to Complainant’s famous trademark that any good faith use by Respondent is near impossible, if not impossible. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <mail-account-gmail.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mail-account-gmail.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 24, 2020
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