Google LLC v. Floan Delveir
Claim Number: FA2012001925079
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Floan Delveir (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-tags.com>, registered with Porkbun 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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 15, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <google-tags.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 December 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 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@google-tags.com. Also on December 16, 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 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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, Google LLC, is one of the top five Best Global Brands throughout the last several years. It provides search services, search engine technology, and associated products and services. One such product is a web developer tool known as the Google Tag Manager tool which allows users to update code on websites or mobile apps. Complainant has rights in the GOOGLE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,123,471, registered on April 10, 2012). See Amend. Compl. Ex. H. Respondent’s <google-tags.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire GOOGLE mark and simply adds the descriptive term “tags” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <google-tags.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the GOOGLE mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to distribute malware via a Magecart attack. Also, the disputed domain name resolves to an inactive webpage.
Respondent registered and uses the <google-tags.com> domain name in bad faith. Respondent uses the disputed domain name to distribute malware as part of a Magecart attack. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the GOOGLE mark based on the fame of the mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Complainant owns the mark GOOGLE and has used that name since at least as early as 1999. It has trademark registrations in the United States and numerous countries across the globe, each of which are valid and in full force and effect. See Complaint at Exhibit H.
2. Among other services, Complainant offers a service called “Google Tag Manager” which allows users to quickly and easily update measurement codes and related code fragments, collectively known as tags on websites or mobile apps. See Complaint at Exhibit G.
3. The disputed domain name <google-tags.com>, registered by Respondent on October 27, 2020, is identical or confusingly similar to the GOOGLE mark.
4. The Respondent has not demonstrated any recognized legitimate rights or interests in the disputed domain name.
5. Complainant has established that the disputed domain name has been registered and used in bad faith.
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, Google LLC, has been providing search services, search engine technology, and associated products and services since at least as early as 1999. The Complainant’s Mark is famous and “was found to be one of the top five Best Global Brands throughout the last several years.” See Amend. Compl. at p. 3. In addition to the search services, Complainant provides web developer tools such as the Google Tag Manager tool which allows users to update code on websites or mobile apps.
Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of a number of trademark registrations for the GOOGLE mark globally, including a certificate of registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,123,471, registered on April 10, 2012). See Amend. Compl. Ex. H.
Respondent’s <google-tags.com> domain name is identical or confusingly similar to Complainant’s GOOGLE mark because it incorporates the entire GOOGLE mark and simply adds the generic term “tags.” The addition of a generic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Offerpad, Inc. v. Phillip Hayes, FA 2008001909553 (Forum Sept. 30, 2020) (“ Respondent’s <offerpaddepot.com> domain name is identical or confusingly similar to Complainant’s OFFERPAD mark because it incorporates the entire OFFERPAD mark and simply adds the generic term “depot.” The addition of a generic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i).”); see also 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).
Also notable is the fact that the term “tags” could easily lead users to mistakenly believe that the domain name is associated with Complainant’s Tag Manager service. See Amend. Compl. Ex. G.
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <google-tags.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the GOOGLE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization or license to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information lists “Floan Delveir” as the registrant and no information suggests Complainant has authorized Respondent to use the GOOGLE mark in any way. See Amend. Compl. Ex. D.
Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to distribute malware and host an inactive webpage. In a previous case involving this same Complainant, the Panel there held that a Respondent’s use of the disputed domain name in connection with a MageCart data breach scheme in which attackers added malicious script to a website was not a bona fide offering of goods or services or a fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). Google LLC v. Kamskova S Evgenevna, FA1905001842393.
Similarly, Complainant provides evidence in this case that Respondent uses the disputed domain name to inject malicious script into third-party software as part of a Magecart attack. See Amend. Compl. Ex. I. In line with the aforementioned case, as well as a number of others, this Panel also finds that because the disputed domain name is being used for malicious purposes, it cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <google-tags.com> domain name in bad faith based essentially on three grounds: (a) Respondent had actual and/or constructive knowledge of Complainant’s rights in the GOOGLE mark at the time Respondent registered and subsequently used the disputed domain name, (b) the disputed domain name is closely connected with a service offered by Complainant and (c) Respondent uses the disputed domain name to distribute malware as part of a Magecart attack.
Although constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Google LLC v. Kamskova S Evgenevna, FA1905001842393 (Forum June 6, 2019) (“Evidence that a mark is famous and extensively used can demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration of a disputed domain name.”). Complainant argues that the fame and uniqueness of the GOOGLE mark makes it improbable that Respondent created the <google-tags.com> domain name independently. This Panel agrees that Respondent has actual knowledge of Complainant’s rights in the GOOGLE mark, the Panel may also find bad faith under Policy ¶ 4(a)(iii).
Panels have also long held that where domain names that are “so obviously connected with a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, (WIPO May 17, 2000). Here, Complainant operates a tool called “Tag Manager” that helps customers manage the tags associated with all of its websites that use Complainant’s (and other third party) systems. Complainant argues that “Respondent could not have chosen and/or used the Domain Name for any other reason than to trade on Complainant’s GOOGLE Mark.” Amend. Compl. p.8. In the absence of any response by the Respondent, or any evidence otherwise, this Panel agrees.
Finally, under Policy ¶ 4(a)(iii), the use of a disputed domain name to disseminate malware is evidence of bad faith. See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”); see also Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undeniable use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The Panel notes that Complainant has submitted into evidence screenshots from multiple virus scanning programs that indicate that the <google-tags.com> domain name is, in fact, being used to embed malware into a third-party website via a Magecart attack. Therefore, the Panel finds that Respondent’s use of the <google-tags.com> domain name to distribute malware is evidence of bad faith registration and use per 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 <google-tags.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: January 21, 2021
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