Google LLC v. Alejandro Juan Comparada / Medios Online Panama
Claim Number: FA2011001921961
Complainant is Google LLC (“Complainant”), represented by Brian J. Focarino of Cooley LLP, District of Columbia, USA. Respondent is Alejandro Juan Comparada / Medios Online Panama (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlesaludtelemedicina.com>, <googlesaludclinicas.com> and <googlesaludnoticias.com>, registered with Wix.com Ltd.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2020. The Forum received payment that day. The Complaint was received in both Spanish and English.
On December 17, 2020, Wix.com Ltd. confirmed by e-mail to the Forum that the <googlesaludtelemedicina.com>, <googlesaludclinicas.com>, and <googlesaludnoticias.com> domain names are registered with Wix.com Ltd. and that Respondent is the current registrant of the names. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. registration agreement in Spanish 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 December 17, 2020, the Forum served the Spanish language Complaint and all Annexes, including a Spanish language Written Notice of the Complaint, setting a deadline of January 6, 2021 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@googlesaludtelemedicina.com, postmaster@googlesaludclinicas.com and postmaster@googlesaludnoticias.com. Also on December 17, 2020, the Spanish language 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 January 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
Pursuant to Rule 11(a), the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
A. Complainant
Since the GOOGLE name was created in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search services in the world. Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <googlesaludtelemedicina.com>, <googlesaludclinicas.com>, and <googlesaludnoticias.com> domain names are identical or confusingly similar to Complainant’s GOOGLE mark.
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the GOOGLE mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to pass itself off as Complainant.
Respondent registered and uses the disputed domain names in bad faith. Respondent has a pattern of bad faith registration and had actual knowledge of Complainant’s rights to the GOOGLE mark prior to registering the disputed domain names as Complainant’s mark is famous.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the GOOGLE mark through numerous registrations of the mark worldwide, including with the USPTO (e.g. Reg. No. 2,954,071, registered May 24, 2005) and in Panama (e.g. Reg Nos. 147311, 147312 and 147317, registered on June 15, 2006).
Respondent’s <googlesaludtelemedicina.com>, <googlesaludclinicas.com>, and <googlesaludnoticias.com> domain names are confusingly similar to Complainant’s GOOGLE mark as they merely add the terms “salud,” (Spanish for health), “telemedicina” (Spanish for telemedicine), “clinicas” (Spanish for clinics) and “noticias” (Spanish for news), none of which distinguish the domain names from the GOOGLE mark, together with the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect
of the domain names.
Complainant has established this element.
Pursuant to a decision made in May 2019, similar domain names registered by Respondent, namely <googlesalud.net> and <googlesaludnews.com>, were transferred to Complainant. See Google LLC v. Alejandro J. Comparada / Alejandro Juan Comparada / Medios Online Panama, FA1840372 (Forum May 24, 2019).
Given the longstanding fame of Complainant’s GOOGLE mark and Respondent’s prior history of bad faith registration and use of similar domain names, the Panel finds that Respondent was fully aware of Complainant and its mark when registering the disputed domain names and that, by using them in order to masquerade as Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and of the services on his website.
Accordingly, the Panel finds that Respondent registered and is using the domain names in bad faith.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlesaludtelemedicina.com>, <googlesaludclinicas.com> and <googlesaludnoticias.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 18, 2021
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