Google LLC v. Laurynas Scukas
Claim Number: FA2012001924385
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Laurynas Scukas (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yzyadwords.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2020; the Forum received payment on December 9, 2020.
On December 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <yzyadwords.com> 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 December 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@yzyadwords.com. Also on December 14, 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 January 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it owns and operates a leading internet search and advertising services company. Complainant was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, its search engine has become one of the most highly recognized Internet search services in the world. Complainant created the AdWords online advertising platform in 2000. The platform uses a pay-per-click model, whereby advertisers bid on keywords, set budgets, and create advertisements, product listings, and service listings that are then displayed on search engines, websites, mobile apps, and videos. The platform has been a major success for Complainant’s business. Although the platform was renamed to Google Ads in 2018, the AdWords brand remains a well-known name that consumers exclusively associate with Complainant. In 2019, the platform generated $134.8 billion USD in advertising revenue. Complainant also created Google Ads certification, which is a professional accreditation that it offered to individuals who demonstrate proficiency in basic and advanced aspects of Google Ads. There are six Google Ads certifications available: Google Ads Search, Google Ads Display, Google Ads Video, Shopping ads, Google Ads Apps, and Google Ads Measurement. Google Ads certification allows individuals to demonstrate that Complainant recognizes them as an expert in online advertising, which can be an important tool in advertising and promoting their services as experts in the marketplace and in Complainant’s advertising platforms. Complainant takes Google Ads certification seriously and participants must pass assessment exams, retake exams to maintain certification annually, and mention their certifications in their resume and social media profiles in accordance with usage guidelines. As such, gaining Google Ads certification is an achievement and is a valuable advertising tool for marketing professionals. Complainant has rights in the ADWORDS mark through its registration of the mark in the United States in 2013.
Complainant alleges that the disputed domain name is identical or confusingly to its ADWORDS mark because it wholly incorporates the mark and merely adds the generic term “yzy” and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent any rights in the ADWORDS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain resolves to a page offering competing goods and services. Further, Respondent overtly commits and perpetuates fraud by offering test-taking services for users seeking to guarantee that they will pass Google’s certification exams. Complainant cites UDRP precedents to support its position.
Respondent registered and uses the <yzyadwords.com> domain name in bad faith because it offers competing goods and services and perpetrates fraud by offering test-taking services. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ADWORDS mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark ADWORDS dating back to 2013 and uses it to market online advertising.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that offers goods and services that compete with those of Complainant, and also offers test-taking services. The web site displays Complainant’s mark and references Complainant’s services.
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 disputed domain name contains Complainant’s mark in its entirety and merely adds the generic term “yzy” and the “.com” gTLD. The addition of a generic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in the ADWORDS mark. Respondent is not commonly known by the disputed domain: absent a reply, 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). Here, the WHOIS information for the disputed domain name lists the registrant as “Laurynas Scukas”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The disputed domain name resolves to a web site that offers goods and services that compete with those of Complainant. Where a respondent uses a domain name to offer competing goods and services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Therefore, the Panel finds that Respondent fails to used the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Respondent also offers test-taking services for users seeking to guarantee that they will pass Complainant’s certification exams. Specifically, the resolving website states: “We will pass all 6 Google Ads related certification exams for you – Google Ad Fundamentals, Search Advertising, Display Advertising, Video Ads, Mobile Adds and Shopping Ads exam.” Prior panels have found that offering test-taking services and/or offering exam pass certificates for sale is blatantly fraudulent activity that cannot support a finding of legitimate rights. See Educational Testing Service v. Perfect Privacy, LLC / ielts certificate, D2019-0362 (WIPO Apr. 8, 2019) (finding that “[Respondent’s] Domain Name previously resolved to a website offering for sale “Original and Genuine TOEFL Certificate without facing the stress and trauma of the Exam”, which is blatantly fraudulent activity that cannot support a finding of legitimate rights.”). For this reason also, the Panel finds that Respondent fails to used the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers competing goods and services. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Further, also as already noted, the resolving web site offers test-taking services. Prior panels have found evidence of bad faith where respondents have offered products or services designed to circumvent a complainant’s legitimate examination practices. See Educational Testing Service v. Perfect Privacy, LLC / ielts certificate, D2019- 0362 (WIPO Apr. 8, 2019) (finding clear evidence that Respondent acted in bad faith where “the Domain Name previously resolved to an active website that appeared to offer fraudulent TOEFL testing certificates, and even boasted of access to a “backdoor” through which “REAL and REGISTERED TOEFL” testing certificates could be generated”). Accordingly, the Panel finds bad faith registration and use on this ground also.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving web site displays Complainant’s mark and references Complainant’s services. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yzyadwords.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 11, 2021
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