Google LLC v. Alex Grekov
Claim Number: FA2103001936451
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Alex Grekov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleais.com>, <20googletagmanager.com>, <gooaglesyndication.com>, <google-stupidix.com>, <googleadservicees.com>, <googleanalytics.site>, <googlecodelibs.com>, <googlesyndicatiofn.com>, <googlesyndiction.com>, <googletagmanag-er.com>, <googletagmanager.blog>, <googlgr.com>, and <googlnalytics.com> (“Domain Names”), registered with NameSilo, 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 March 12, 2021; the Forum received payment on March 12, 2021.
On March 16, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <googleais.com>, <20googletagmanager.com>, <gooaglesyndication.com>, <google-stupidix.com>, <googleadservicees.com>, <googleanalytics.site>, <googlecodelibs.com>, <googlesyndicatiofn.com>, <googlesyndiction.com>, <googletagmanag-er.com>, <googletagmanager.blog>, <googlgr.com>, and <googlnalytics.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@googleais.com, postmaster@20googletagmanager.com, postmaster@gooaglesyndication.com, postmaster@google-stupidix.com, postmaster@googleadservicees.com, postmaster@googleanalytics.site, postmaster@googlecodelibs.com, postmaster@googlesyndicatiofn.com, postmaster@googlesyndiction.com, postmaster@googletagmanag-er.com, postmaster@googletagmanager.blog, postmaster@googlgr.com, postmaster@googlnalytics.com. Also on March 18, 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 April 9, 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’s GOOGLE search engine has become one of the most highly recognized Internet search engines in the world. Complainant has rights in the GOOGLE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered September 14, 2004). Respondent’s Domain Names are each confusingly similar to Complainant’s mark as they all incorporate the entirety of the GOOGLE mark and merely add a generic term such as “analytics”, “tag” or “manager” and/or a hyphen and/or the generic number “20” and the generic top level domain (“gTLD”) “.com”, “.site”, or “.blog”.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the GOOGLE mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent apparently uses some of the Domain Names to distribute malicious software that may hijack users’ computers.
Respondent registered and uses the Domain Names in bad faith. Respondent’s bad faith is indicated by the use of a privacy service to conceal its true WHOIS information. Additionally, Respondent has participated in a pattern of typosquatting. Additionally, Respondent engages in opportunistic bad faith based on the fame of the GOOGLE mark. Finally, Respondent registered the Domain Names with constructive and/or 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 on registration with the USPTO (e.g. Reg. No. 2,884,502, registered September 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. Ten of the Domain Names consist of the GOOGLE mark, a generic or descriptive term or abbreviation (sometimes misspelled) and a gTLD. The remaining Domain Names <gooaglesyndication.com>, <googlnalytics.com> and <googlgr.com> consist of a misspelling of the GOOGLE mark and either a generic or descriptive term (sometimes misspelled) or the abbreviation “gr” and a gTLD. The modification of the spelling of a mark and/or the addition of a generic term and/or the addition of generic letters 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 names] 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 names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). See also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see additionally Am. Online, Inc. v. Oxford Univ., FA 104132 (Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). The addition of a gTLD also fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
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 “Alex Grekov” 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 are either inactive or have been flagged by anti-malware software as being possibly being connected to malicious activity and there is no other evidence of any intention to use the Domain Names for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). The same conclusion can be reached with respect to any use of the domain names in connection with malicious activity. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 it acquired the Domain Names, being late 2020 or early 2021, Respondent had actual knowledge of Complainant’s GOOGLE mark. The Complainant’s GOOGLE mark is well-known to anyone connected to the Internet and Respondent has not provided any explanation for its registration of thirteen domain names that wholly incorporate Complainant’s mark or a misspelling of Complainant’s mark. The Panel also notes that some of the Domain Names also contain misspellings of the words “ad services” and “analytics” which suggests a familiarity with Complainant’s ad services and analytics products. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the GOOGLE mark from reflecting is mark in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without alternative explanation (or active legitimate use), registered 13 domain names wholly incorporate the GOOGLE mark. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii).
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 <googleais.com>, <20googletagmanager.com>, <gooaglesyndication.com>, <google-stupidix.com>, <googleadservicees.com>, <googleanalytics.site>, <googlecodelibs.com>, <googlesyndicatiofn.com>, <googlesyndiction.com>, <googletagmanag-er.com>, <googletagmanager.blog>, <googlgr.com>, and <googlnalytics.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 13, 2021
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