Google LLC v. Jiri Capcuch
Claim Number: FA2012001926089
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Jiri Capcuch (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--gmil-6na.com> and <xn--gogle-uta.com> (‘the Domain Names’), registered with Dynadot, LLC; Dynadot11 LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2020; the Forum received payment on December 22, 2020.
On December 23, 2020, Dynadot, LLC; Dynadot11 LLC confirmed by e-mail to the Forum that the <xn--gmil-6na.com> and <xn--gogle-uta.com> domain names are registered with Dynadot, LLC; Dynadot11 LLC and that Respondent is the current registrant of the names. Dynadot, LLC; Dynadot11 LLC has verified that Respondent is bound by the Dynadot, LLC; Dynadot11 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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 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--gmil-6na.com, postmaster@xn--gogle-uta.com. Also on December 30, 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 24, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark GOOGLE, registered, inter alia, in the USA for Internet related services as of 2004. The Complainant is also the owner of the mark GMAIL, registered, inter alia in the USA for Internet related services as of 2006.
<xn--gogle-uta.com> was registered in 2012. <xn--gmil-6na.com> was registered in 2016.
The Domain Names include certain characters that rely on information exchange coding systems for electronic communications, such that computers translate the Domain Names from xn--gmil-6na.com to gmáil.com and from xn--gogle-uta.com to gòogle.com. The Domain Names include characters that make use of “Punycode”, which is an ASCII-compatible encoding standard designed for use with internationalized domain names (“IDN”) containing non-Latin (and non-ASCII) characters. To display those characters, each component of the domain name that is not in ASCII characters is encoded by a system such as Punycode. ASCII stands for the American Standard Code for Information Interchange, which is a character encoding standard for electronic communications. ASCII codes represent text in computers, telecommunications equipment, and other devices. The current Internet configuration does not recognize non- ASCII characters; thus, a system such as Punycode translates non-ASCII characters into their equivalent “ASCII transliteration”. The translation is invisible to the Internet user.
Panels have treated Punycode iterations of domain names in an identical manner with their IDN counterparts. A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” Here, the Domain Names fully incorporate the famous GOOGLE and GMAIL marks in their entirety and are therefore confusingly similar to the GOOGLE and GMAIL marks. The domain name <xn--gmil-6na.com> translates to <gmáil.com>, which wholly incorporates Complainant’s famous GMAIL Mark with an addition of an accent over the letter “a”, which does little to distinguish the domain name. Similarly, the domain name <xn--gogle-uta.com> translates to <gòogle.com>, which wholly incorporates Complainant’s famous GOOGLE Mark with an addition of an accent over the letter “o”, which also does little to distinguish the domain name. The addition of a gTLD does not prevent confusing similarity between the Domain Names and the Complainant’s mark. As such the Domain Names are confusingly similar to Complainant’s famous GOOGLE and GMAIL Marks.
The Respondent has no rights or legitimate interests in the Domain Names is not commonly known by them and is not authorized by the Complainant.
The Domain Names do not resolve to active websites, but have active MX email accounts which may be used for phishing purposes. While <xn--gmil-6na.com> does not resolve to an active website, it at times does redirect to another site, which prompts the user to download an extension to their web browser. These uses are not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith. Respondent’s efforts to re-direct Google’s consumers to Respondent’s associated webpage and prompts to download an unknown browser extension create consumer confusion for its own benefit, and such use of the GMAIL Mark indicates bad faith registration and use according to Policy 4(b)(iv). Respondent has also engaged in a pattern of bad faith behavior by registering multiple domains that wholly incorporate Complainant’s GOOGLE and GMAIL Marks that target Complainant’s brands.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark GOOGLE, registered, inter alia, in the USA for Internet related services as of 2004. The Complainant is also the owner of the mark GMAIL, registered, inter alia in the USA for Internet related services as of 2006.
<xn--gogle-uta.com> was registered in 2012. <xn--gmil-6na.com> was registered in 2016.
The Domain Names do not resolve to active websites, but have active MX email accounts. While <xn--gmil-6na.com> does not resolve to an active website, it at times does redirect to another site, which prompts the user to download an extension to their web browser.
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”).
PRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAMES
The domain names in dispute, <xn--gmil-6na.com> and <xn--gogle-uta.com>, are internationalized domain names (“IDN”) with the PUNYCODE translations of [<gmáil.com>] and [<gòogle.com>]. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the [<gmáil.com>] and [<gòogle.com>] properly in the <xn--gmil-6na.com> and <xn--gogle-uta.com> domain names, it first had to encode it into the [<gmáil.com>] and [<gòogle.com>] domain names.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the <xn--gmil-6na.com> and <xn--gogle-uta.com> domain names are the same as their PUNYCODE translation, [<gmáil.com>] and [<gòogle.com>] respectively, for purposes of this proceeding.
The Domain Names consist of the Complainant’s GOOGLE or GMAIL marks (registered, inter alia, in the USA since at least 2004 or 2006 respectively for Internet searching services) an accent and the gTLD.com. The domain name <xn--gmil-6na.com> translates to <gmáil.com>, which wholly incorporates Complainant’s famous GMAIL Mark with an addition of an accent over the letter “a”, which does little to distinguish the domain name. Similarly, the domain name <xn--gogle-uta.com> translates to <gòogle.com>, which wholly incorporates Complainant’s famous GOOGLE Mark with an addition of an accent over the letter “o”, which also does little to distinguish the domain name. The addition of an accent to a single letter in a domain name fails to sufficiently distinguish a disputed domain name from a mark per Policy 4(a)(i).
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s marks, which are the distinctive component of the Domain Names. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are each confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. 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).
The Respondent has used the site attached to <xn--gmil-6na.com> for third party Internet related services and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
Where a respondent inactively holds a domain name, 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 Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy 4(c)(iii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of <xn--gmil-6na.com> in relation to third party Internet related services is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's GMAIL trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. 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 advertise car dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use).
Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”).
Registration of the Domain Names containing two separate trademarks of the Complainant shows that the Respondent has actual knowledge of the Complainant, its rights, business and services and indicates a pattern of activity.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶¶ 4(b)(ii), (iii) and (iv).
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--gmil-6na.com> and <xn--gogle-uta.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 25, 2021
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