Google LLC v. seek mail
Claim Number: FA2008001907669
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, United States. Respondent is seek mail (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2020; the Forum received payment on August 7, 2020.
On August 10, 2020 and August 14, 2020, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the domain 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 August 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@googleuserccontent.com, postmaster@google-noreply.com, postmaster@google-noply.com, postmaster@google-security-group.com, postmaster@. Also on August 24, 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 September 17, 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 is one of the most highly recognized Internet services in the world. Complainant has rights in the GOOGLE mark due to its registration of the mark with the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Amend. Compl. Ex. G. Respondent’s <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Respondent incorporates the mark in its entirety and adds generic terms along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the GOOGLE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant in order to gain personal information of internet users. Respondent also fails to make an active use of the disputed domain names.
Respondent registered and used the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names bad faith as Respondent uses the domain names in an attempt gather internet users’ personal information. Respondent has engaged in a pattern of bad faith by registered at least four at issue domains in a one month period. Lastly, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark due to the long standing use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates one of the most highly recognized Internet services in the world.
2. Complainant has established it trademark rights in the GOOGLE mark due to its registration of the mark with the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004).
3. Respondent registered the <googleuserccontent.com>, <google-noreply.com> and <google-noply.com> domain names on May 21, 2020 and the <google-security-group.com> domain name on May 25, 2020.
4. Respondent attempts to pass itself off as Complainant in order to gain personal information of internet users. Respondent also fails to make an active use of the disputed domain names.
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 claims to have rights in the GOOGLE mark due to its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the GOOGLE mark (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Amend. Compl. Ex. G. Therefore, the Panel finds that Complainant has rights in the GOOGLE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE mark. Complainant argues that Respondent’s <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Registration of a domain name that contains a mark in its entirety and adds generic terms and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds generic terms such as “users content,” “no reply,” and “security group” along with the “.com” gTLD. Therefore, the Panel finds that the disputed domain names are confusingly similar to the GOOGLE mark.
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, adding generic words such as “users content,” “no reply,” and “security group” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <googleuserccontent.com>, <google-noreply.com> and <google-noply.com> domain names on May 21, 2020 and the <google-security-group.com>domain name on May 25, 2020;
(c) Respondent attempts to pass itself off as Complainant in order to gain personal information of internet users. Respondent also fails to make an active use of the disputed domain names;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the GOOGLE mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “seek mail” and there is no other evidence to suggest that Respondent was authorized to use the GOOGLE mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant in order to gain personal information of internet users. Use of a disputed domain name that incorporates a well-known and famous mark in order to pass off as a complainant in order to gain personal information is not a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (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.”). Here, Complainant argues that Respondent uses the GOOGLE mark in association with its domain names to confuse internet users in hope of gaining personal information. Therefore, the Panel determines that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent also fails to make an active use of the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names. Failure to make an active use of a disputed domain is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides the Panel with screenshots of Respondent’s domain names’ resolving webpages that all show that the page can’t be reached with a 403 error. See Amend. Compl. G. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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.
First, Complainant argues that Respondent engages in a pattern of bad faith by registering at least four disputed domain names. Registration of multiple domain names in a single case is sufficient to establish a pattern of bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Here, Complainant argues that Respondent registered four infringing domain names, <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com>, that are at issue in this case. Therefore, as the Panel agrees, it finds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and used the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names in bad faith as Respondent uses the domain names in an attempt gather internet users’ personal information. Use of a disputed domain name to pass off as a complainant in order to gain personal information may be evidence of bad faith per Policy ¶ 4(b)(iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). Here, Complainant argues that Respondent uses the GOOGLE mark in association with its domain names to confuse internet users in hopes of gaining personal information. Therefore, the Panel finds that Respondent’s actions constitute bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the GOOGLE mark at the time of registering the <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and that actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under 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 <googleuserccontent.com>, <google-noreply.com>, <google-noply.com>, and <google-security-group.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 17, 2020
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