Google LLC v. Nanci Nette / Name Management Group
Claim Number: FA2012001925681
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Nanci Nette / Name Management Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> (collectively “Domain Names”), registered with Dynadot, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2020; the Forum received payment on December 18, 2020.
On January 7, 2021, Dynadot, Llc; confirmed by e-mail to the Forum that the <xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> domain names are registered with Dynadot, Llc and that Respondent is the current registrant of the names. Dynadot, Llc; has verified that Respondent is bound by the Dynadot, 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 January 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 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@xn--gogle-7ta.com, postmaster@netgoogle.com, postmaster@googleacount.com, postmaster@google-image.com. Also on January 7, 2021, 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 February 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Google LLC, operates one of the most well-known information technology companies in the world. Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,884,502, registered Sep. 14, 2004). Respondent’s <<xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> domain names are confusingly similar to Complainant’s GOOGLE mark. The first domain relies on information exchange coding systems which translates the <xn--gogle-7ta.com> domain to read <goôgle.com>. This is nearly identical to Complainant’s GOOGLE mark, only differing by changing the second “o” to “ô” and adding the “.com” generic top-level domain (“gTLD”). The <netgoogle.com> domain name adds the generic term “net” to Complainant’s mark and appends the “.com” gTLD to the end. The <googleacount.com> domain name only differs by the addition of a misspelling of the generic term “account” and the “.com” gTLD. The domain name <google-image.com> alludes to Complainant’s Google Image search service, as it entirely incorporates Complainant’s GOOGLE mark and merely adds a hyphen and the generic term “image” along with the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> domain names as it is not commonly known by any of the Domain Names and is not an authorized user or licensee of the GOOGLE mark. Additionally, Respondent does not use any of the Domain Names for a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to falsely associate itself with Complainant to conduct fraudulent and commercial schemes such as downloading malware and pay-per-click webpages.
Respondent registered and uses the <xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> domain names in bad faith. Respondent’s registration of multiple infringing domain names in this case may display a pattern of bad faith registration. Additionally, Respondent disrupts Complainant’s business by directing users to inactive websites and a website that attempts to distribute malicious software to Internet users. Respondent also uses the Domain Names to conduct commercial schemes and obtain financial gain through pay-per-click hyperlinks. Complainant also contends that Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GOOGLE mark. Each of the Domain Names is confusingly similar to Complainant’s GOOGLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 has rights in the GOOGLE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,884,502, registered Sep. 14, 2004). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that each of the Domain Names is confusingly similar to the GOOGLE mark as they each incorporate the entire mark. Three of the Domain Names add a single generic term (one being a minor misspelling of a generic term) and the “.com” gTLD, while the fourth uses “Punycode” to create a domain name that reads as <goôgle.com>, which is virtually identical to the GOOGLE mark, adding only an accent above the “o” and the “.com” gTLD. Typographical errors, additional descriptive words and appended gTLDs are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark because it contains the entire mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GOOGLE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Nanci Nette / Name Management Group” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names either resolve to websites featuring pay-per-click links to third party websites which purport to offer competing goods (namely search engines) to Complainant or fraudulent websites that appear on their face to deliver malware. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of each of the Domain Names between 2012 and 2019, Respondent had actual knowledge of Complainant’s GOOGLE mark. The Panel reaches this conclusion based on the ubiquity of the GOOGLE mark and the use of a number of the Domain Names to resolve to websites that contain pay-per-click links that are in respect of Complainant’s business or specifically refer to Complainant. Furthermore it is improbable that a party would register four domain names that wholly incorporate Complainant’s GOOGLE mark in the absence of any awareness of this mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s GOOGLE Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites containing either advertisements and links to third party websites for commercial gain or malware. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The same is the case for the use of a confusingly similar domain name to distribute malware. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied 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 <xn--gogle-7ta.com>, <netgoogle.com>, <googleacount.com>, and <google-image.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 2, 2021
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