Google LLC v. James Chadier Compagny
Claim Number: FA2105001947229
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is James Chadier Compagny (“Respondent”), Europe.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--gogle-uob.com> and <xn--googeimages-w5b.com>, registered with OVH sas.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2021; the Forum received payment on May 24, 2021. The Complaint was received in English.
On May 24, 2021, OVH sas confirmed by e-mail to the Forum that the <xn--gogle-uob.com> and <xn--googeimages-w5b.com> domain names are registered with OVH sas and that Respondent is the current registrant of the names. OVH sas has verified that Respondent is bound by the OVH sas 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 May 26, 2021, the Forum served the English language Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of June 15, 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-uob.com, postmaster@xn--googeimages-w5b.com. Also on May 26, 2021, the French and English language 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 June 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes the French language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore French. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English based on evidence linking Respondent with a YouTuber and self-promotor by the name of James Chadier who, on the evidence, speaks English fluently. The Panel accepts that Respondent and James Chadier are one and the same.
The Panel finds that Respondent had the capacity in to read and comprehend the Complaint and to have filed a Response in English. In the circumstances the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in GOOGLE since it holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides an internet search engine under the trademark GOOGLE;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 2,884,502 for GOOGLE from September 16, 1998;
3. Complainant uses the mark GOOGLE IMAGES for its search engine dedicated to finding images and photos but there is no evidence of a registration of that mark;
4. the disputed domain names were registered on August 14, 2020 and are used as described later;
5. the disputed domain names are Punycode iterations of Internationalized Domain Names (“IDN”s) where the domain name <xn--gogle-uob.com> corresponds with the IDN “gơogle.com” and the domain name <xn--googeimages-w5b.com> corresponds with the IDN “googłeimages.com”; and
6. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating the trademarks.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant provides evidence of its USPTO registration for the trademark GOOGLE and so the Panel finds that Complainant has rights in that trademark.
Complainant submits that the domain names “fully incorporate the famous GOOGLE Mark in its entirety and are therefore confusingly similar to the GOOGLE Mark”. In another place Complainant submits that the domain names “are identical and confusingly similar to Complainant’s famous marks GOOGLE and GOOGLE IMAGES.”
The Complaint does not provide evidence of trademark rights, registered or otherwise, in GOOGLE IMAGES but for reasons which follow its reliance on the GOOGLE registration is in these proceedings, sufficient.
Complainant goes on to petition the Panel to treat the Punycode iterations of the disputed domain names in an identical manner to their IDN counterparts, concluding that:
“[t]he fame of the distinctive GOOGLE Mark and the non-distinctiveness of the misspelled versions of the Domain Names will cause users encountering the Domain Names to mistakenly believe the Domain Names originate from, are associated with, or are sponsored by Complainant. As such, the Domain Names are nearly identical and confusingly similar to the GOOGLE Mark.”
The Panel has in its decision in Bittrex, Inc. v. clayt closiner / Caly Company. / bittrex acc, FA1801001766167 (Forum May 8, 2018) considered and better articulated the questions arising again here. At that time, it found that none of the frequently cited UDRP decisions directly confronted the question of whether, for the purposes of the Policy, an IDN expressed and registered in its Punycode form which bears no visual or phonetic resemblance to the at-issue trademark should be considered as either “identical” or “confusingly similar” to that trademark.
The UDRP decisions which have followed have not caused the Panel to depart from its in-principle reasoning in that case but it takes the view here, in these undefended proceedings, that it is enough to follow current thinking which is to treat the Punycode registered domain name and its IDN expression as what has been sometimes called, “technically equivalent”.
Accordingly, for the purpose of comparison of the domain names with the trademarks it is well accepted that the gTLD, “.com” can be disregarded. There is no evidence accompanying the Complaint as to how the inflected terms “gơogle” and “googłeimages” would ordinarily be pronounced and so nothing can be said of their aural similarity to the trademark. On the other hand, the visual correspondence is self-evident and on the weight of that alone the Panel finds the disputed domain names to be confusingly similar to the trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to both disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The domain name holder is James Chadier Compagny which does not indicate that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights of its own and Complainant has stated that it has not permitted Respondent to use its trademark. Further, Complainant provides screenshots of the webpage resolving from one of the disputed domain names which advertises third party goods and services largely unrelated to Complainant’s business under the trademark; the other domain name appears to be used simply to draw internet traffic misled by the name.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names[v]. The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(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 who 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, provided that Respondent has engaged in a pattern of such conduct; 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain names to be confusingly similar to the trademark; their very nature falsely suggests that the resolving online locations are associated with Complainant. The Panel finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain names to attract, for commercial gain, Internet users to the resolving webpages or online locations by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those places. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vi].
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-uob.com> and <xn--googeimages-w5b.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: June 30, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a non-commercial or fair use under Policy ¶ 4(c)(iii).”); Disney Enters., Inc. v. Kamble, FA918556 (Forum Mar. 27, 2007) holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy); WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
[vi] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page