Google LLC v. Rachel F Baily
Claim Number: FA2103001936792
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Rachel F Baily (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleclassroom.us> and <youtubeshorts.us>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2021; the Forum received payment on March 16, 2021.
On March 16, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <googleclassroom.us> and <youtubeshorts.us> domain names (the Domain Names) are registered with Porkbun LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD 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 May 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@googleclassroom.us, postmaster@youtubeshorts.us. 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 May 11, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmneister 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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 operates an Internet search service and various other technology services. It has rights in the GOOGLE and YOUTUBE marks through its registration of those marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <googleclassroom.us> and <youtubeshorts.us> Domain Names are confusingly similar to Complainant’s GOOGLE and YOUTUBE marks as they contain the GOOGLE and YOUTUBE marks in their entirety, merely adding the descriptive terms “classroom” and “shorts,” and the top-level domain (“TLD”) “.us.”
Respondent has no rights or legitimate interests in the Domain Names. Respondent has not been commonly known as the Domain Names, nor has Complainant authorized or licensed Respondent to use any of its trademarks in any way. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. The <youtubeshorts.us> Domain Name resolves to an inactive website and Respondent passes off as Complainant using the <googleclassroom.us> Domain Name.
Respondent registered and uses the Domain Names in bad faith. Respondent engaged in a pattern of bad faith registrations. Respondent fails to make active use of the <youtubeshorts.us> Domain Name and passes off as Complainant using the <googleclassroom.us> Domain Name. Further, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE and GOOGLE marks when it registered the Domain Names and it registered them using false WHOIS information.
B. Respondent
Respondent did not submit a Response in this proceeding but on March 19, 2021 sent an email to the Forum indicating a willingness to transfer the Domain Names to Complainant. Shortly after that, Complainant copied the Forum on its reply to Respondent. The reply included a description of a course of dealing or pattern in which Respondent’s stated willingness to transfer the Domain Names involved in this proceeding, and a number of other infringing domain names, soon transformed into an offer by Respondent to sell all of the domain names for what Respondent characterized as a discounted price. Subsequent emails from Respondent confirmed that it was in fact offering the names for sale. None of Respondent’s communications to the Forum conforms with the requirements of Rule 5 and the Panel does not consider them as a Response. Inasmuch as Respondent’s stated willingness to transfer the Domain Names to Complainant appears to be conditioned upon Complainant paying for such transfer, the Panel will analyze the matter in accordance with the Policy.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The GOOGLE mark was registered to Complainant with the USPTO (Reg. No. 2,954,071) on May 24, 2005 (Complaint Exhibit I). The YOUTUBE mark was registered to Google, Inc. (Reg. No. 3,711,233) on November 17, 2009 and subsequently assigned to Complainant (Complaint Exhibit I). Complainant’s ownership of these USPTO registrations establishes its rights in the GOOGLE and YOUTUBE marks for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <googleclassroom.us> and <youtubeshorts.us> Domain Names are confusingly similar to Complainant’s GOOGLE and YOUTUBE marks as they incorporate the GOOGLE and YOUTUBE marks in their entirety, merely adding the descriptive terms “classroom” and “shorts,” and the country-code top-level domain (“ccTLD”) “.us.” These changes do not distinguish the Domain Names from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). 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), Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). .”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the GOOGLE and YOUTUBE marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use its mark, (ii) Respondent is not commonly known by the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Name <googleclassroom.us> resolves to a web site which mimics and passes off as one of Complainant’s web sites and the Domain Name <youtubeshorts.us> resolves to an inactive web site. These allegations are addressed as follows:
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the Forum by the registrar lists “Rachel F Baily” as the registrant of the Domain Names. This name bears no resemblance to either Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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 Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(iii).
Complaint Exhibit D contains a screenshot of the web site resolving from the <googleclassroom.us> Domain Name. It is virtually identical to Complainant’s web site at <edu.google.com/products/classroom> shown in the Complaint and Complaint Exhibit J. Using a confusingly similar domain name to pass off as or suggest an affiliation with a complainant is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).[i]
Complaint Exhibit D also contains a screen shot of the web site resolving from the <youtubeshorts.us> Domain Name. It has no substantive content and advises the visitor that the owner has not put up a site yet. Failing to make active use of a confusingly similar domain name is not a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has no rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Complainant did not address or offer evidence specifically bearing upon the Policy ¶ 4(c)(i) factor stated above. Typically, Complainants in usTLD cases search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while it would have been preferable for Complainant to have offered evidence bearing specifically upon this element of the case, the evidence that is available is sufficient to establish an inference that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Names. Complainant and its YouTube video sharing service are a common, everyday presence throughout the world (Complaint Exhibits F, G & H). The list of registrations of those marks with governmental trademark authorities throughout the world included in Complaint Exhibit I is extensive and covers many countries. The Domain Names were registered in February 2021 (Complaint Exhibit D) and there is no evidence of any other use of those names by Respondent. On this evidence, and in the absence of any evidence to the contrary, it is extremely unlikely that any governmental trademark authority would have registered a trademark identical to either Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could under any circumstances be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Names.
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in February 2021 (WHOIS information submitted in Complaint Exhibit D shows creation date). Complainant’s GOOGLE and YOUTUBE marks had been registered with the USPTO since 2009 at the latest (Complainant Exhibit I), and Respondent copied the content of Complainant’s web stie at <edu.googleclassroom.com/products/classroom> exactly into its website resolving from the <googleclassroom.us> Domain Name. Respondent’s familiarity with the YOUTUBE mark is demonstrated by its emails offering both Domain Names for sale. This may not fall within any of the circumstances described in Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith and registering an identical or confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
Second, Respondent registered and is using and holding the Domain Names, which fully incorporate the well-known GOOGLE and YOUTUBE marks. As discussed above, however, Respondent has no connection with either of those marks or their owner, the Complainant. Again, this may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but given the nonexclusive nature of Policy ¶ 4(b), using a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Further, it is evident from the emails between Complainant and Respondent shortly after the Complaint was filed in this proceeding that Respondent registered the Domain Names primarily for the purpose of selling them to Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the names, and in order to prevent Complainant from reflecting them in corresponding domain names of its own unless, of course, it paid Respondent for the names. Respondent’s emails described above make clear that Respondent proposes to sell not only the two Domain Names involved in this proceeding but another 33 domain names which also infringe on Complainant’s intellectual property rights. Respondent asks $23,624 for all 35 of them. The Panel did not regard Respondent’s emails as a formal Response, but their content is nevertheless in the record and can properly be considered as evidence. Respondent’s conduct fits squarely within the circumstances articulated in Policy ¶¶ 4(b)(i) and (ii) and is manifest evidence of bad faith.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleclassroom.us> and <youtubeshorts.us> Domain Names be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
May 13, 2021
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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