Google LLC v. John Harris / YT
Claim Number: FA2007001906135
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is John Harris / YT (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gooqle.email>, registered with Namecheap, 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.
James Bridgeman SC 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, Namecheap, Inc. confirmed by e-mail to the Forum that the <gooqle.email> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, 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 August 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@gooqle.email.
Also on August 4, 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 26, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the GOOGLE mark acquired through its ownership of its large international portfolio of trademark and service mark registrations described below and the goodwill that it has established by using the mark in its famous search engine and other services.
Complainant submits that the disputed domain name <gooqle.email> is nearly identical and confusingly similar to its GOOGLE mark as it consists of a misspelling of the mark in its entirety, simply replacing “g” with “q” together with the Top Level Domain (“gTLD”) extension <.email>. See 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 adds that the gTLD extension <.email> is required for the purpose of domain name registration and thus is irrelevant for the purpose of evaluating confusing similarity under the Policy. See, e.g., Sears Holdings Corporation v. David Rahmany / Dme / N Rahmany, FA1618201 (June 8, 2015) (“As a general rule, the addition of a gTLD to a domain name does not adequately distinguish the domain name from the mark at issue. . . . To hold otherwise would be to eviscerate the UDRP because trademarks do not commonly contain a gTLD.”).
Complainant further submits that the choice of the <.email> gTLD confirms the confusing similarity to Complainant’s mark, because the term “email” is highly related to Complainant’s business and arguably describes the current products and services offered by Complainant under the GOOGLE mark. Google Inc. v. Babaian, FA0708001060992 (Forum Oct. 1, 2007) (finding domain names confusingly similar under Policy ¶ 4(a)(i) where the registrant merely added “generic words [like] ‘web,’ ‘data,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that by choosing the <.email> gTLD, Respondent demonstrates that it is undoubtedly very familiar with the GOOGLE well known mark, email products and services. Complainant argues that previous panels have held that there can be no right or legitimate interests under Policy ¶ 4(c)(i) when, as in this case, a respondent is on notice that a complainant possesses strong trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. George Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant submits that on information and belief, Respondent is not commonly known as the disputed domain name or any name containing Complainant’s GOOGLE mark. The Registrar’s WHOIS information in connection with the disputed domain name makes no mention of <gooqle.mail> or the GOOGLE mark as Respondent’s name or nickname. Complainant argues that a registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name. See Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way and argues that the unlicensed, unauthorized use of a domain name incorporating Complainant’s GOOGLE trademark is strong evidence that Respondent has no rights or legitimate interest in the disputed domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).
Moreover, Complainant argues that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name. Complainant submits that on the contrary, upon information and belief, Respondent uses and/or intends to use the disputed domain name and GOOGLE mark to confuse consumers, falsely associate itself with Complainant, conduct phishing schemes, and defraud Complainant’s customers into providing sensitive personal and financial information to entities not associated with Complainant. None of these actions create rights or legitimate interests under the Policy. See Agilent Technologies, Inc. v. Vincent Muscat, FA1806001791505 (Forum July 17, 2018) (“using a disputed domain name to pass off and phish for users personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i).”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that the fame and unique qualities of the GOOGLE mark, which was adopted by Complainant prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the disputed domain name independently.
Complainant argues that Respondent’s willful intent to violate Complainant’s intellectual property rights is further exhibited by the inclusion of the entirety of the GOOGLE mark in the disputed domain name and by the use of the <.email> gTLD, which is descriptive of a product offered by Complainant under its GOOGLE mark. Complainant submits that it is clear that Respondent intentionally registered the disputed domain name to improperly exploit its trademark value, rather than for some benign reason and it is impossible to conceive of any potential legitimate use of the disputed domain name
Complainant further argues that the disputed domain name may be part of a phishing scheme in which Respondent seeks to collect personal information–including Gmail users’ confidential passwords–from users seeking services relating to their Gmail accounts. Complainant states that while the disputed domain name does not currently resolve to an active website, upon information and belief, it was designated as “dangerous” by Google Chrome’s security indicating that the domain was detected in use for phishing.
Complainant refers to a screenshot taken from a website associated with the disputed domain name which is attached as an exhibit to the Complaint which is a warning page from Google Chrome security indicating that there is a “Deceptive site ahead” and that “Attackers on gooqle.email may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and uses the GOOGLE trademark and service mark to distinguish its search engine and other services.
Complainant is the owner of a large international portfolio of trademark and service mark registrations for the GOOGLE mark including
· United States registered service mark GOOGLE, registration number 2,806,075 registered on the Principal Register on January 20, 2004 for services in international classes 38 and 42;
· United States registered trademark GOOGLE, registration number 2,884,502, registered on the Principal Register on September 14, 2004 for goods in international class 9.
· United States registered trademark and service mark GOOGLE, registration number 2,954,071, registered on the Principal Register on May 24, 2005 for goods and services in international classes 9, 11, 12, 16, 18, 21, 25, 28 and 35;
· United States registered service mark GOOGLE (Design), registration number 4,123471, registered on April 10, 2012.
The disputed domain name <gooqle.mail> was registered on May 18, 2020.
There is no information available about Complainant, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to request by the Forum for details of the registration of the disputed domain name in the course of this Complaint. The information provided by the Registrar disclosed Respondent’s name and contact details which is redacted on the publicly available WhoIs.
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 clear and convincing, uncontested evidence of its rights GOOGLE mark acquired through its ownership of its large international portfolio of trademark and service mark registrations described below and the goodwill that it has established by the extensive use of the mark for its famous search engine and other services.
The disputed domain name <gooqle.email> consists of a misspelling of the mark in its entirety, simply replacing “g” with “q” together with the Top Level Domain (“gTLD”) extension <.email>.
The substitution of the letter “q” for “g” is likely to go unnoticed by many Internet users at first glance and create confusion with Complainant’s GOOGLE mark.
The gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a Top Level Domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the GOOGLE trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that In light of Respondent’s use of the <.email> gTLD, Respondent is undoubtedly very familiar with Complainant’s pre-existing rights in the GOOGLE mark and its email products and services;
· that Complainant has not authorized or licensed Respondent to use any of its trademarks in any way;
· that on information and belief, Respondent is not commonly known as the disputed domain name or any name containing Complainant’s GOOGLE mark;
· that the Registrar’s WHOIS information in connection with the disputed domain name makes no mention of either the disputed domain name <gooqle.mail> or the GOOGLE mark as Respondent’s name or nickname;
· that upon information and belief, Respondent uses and/or intends to use the disputed domain name and GOOGLE mark to confuse consumers, falsely associate itself with Complainant, conduct phishing schemes, and defraud Complainant’s customers into providing sensitive personal and financial information to entities not associated with Complainant;
· that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name.
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 these 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).
This Panel also finds that, as Complainant alleges, the disputed domain name was registered in bad faith and accepts that because of the fame and unique qualities of the GOOGLE mark, it is wholly implausible that the disputed domain name was created and registered independently by a registrant unaware of Complainant and its famous GOOGLE search engine.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in an act of typosquatting whereby the registrant intentionally replaced the quite similar letter “q” for “g” in GOOGLE and strategically chose the <.mail> gTLD in order to take predatory advantage of Complainant and its goodwill.
Complainant has argued, but provided insufficient evidence to establish, that the disputed domain name is used as part of a phishing scheme. It refers to a screenshot of a page which appears to have been generated by one of Complainant’s own products namely GOOGLE CHROME that generated a security warning that there was a deceptive site ahead. If this evidence were presented by a third-party it would have stronger probative value than in the present case where Complainant is relying on an algorithm in its own proprietary software. So, in the absence of evidence of how this warning was generated, this Panel cannot safely find that the disputed domain name has been used for phishing.
That being said, because the disputed domain name is inactive, the GOOGLE mark is undoubtedly famous and on the balance of probabilities disputed domain name is on the balance of probabilities a considered tactical exercise in typosquatting on the <.mail> gTLD, and in circumstances where Respondent has failed to respond to the Complaint, this Panel finds that the passive holding of the disputed domain name amounts to bad faith use.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Because Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of 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 <gooqle.email> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: August 26, 2020
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