Google LLC v. Shu Lin
Claim Number: FA2110001967906
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Shu Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--gogle-vob.com>, registered with Above.com Pty Ltd..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2021; the Forum received payment on October 6, 2021.
On October 13, 2021, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <xn--gogle-vob.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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-vob.com. Also on October 14, 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 November 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAME
The domain name in dispute, <goơgle.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--gogle-vob.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 <xn--gogle-vob.com> properly in the <goơgle.com> domain name, it first had to encode it into the <xn--gogle-vob.com> domain name.
Prior 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). The Panel here finds that the <goơgle.com> domain name is the same as its PUNYCODE translation, <xn--gogle-vob.com>, for purposes of this proceeding.
A. Complainant
Complainant, Google LLC, operates a highly recognized Internet search service. Complainant has rights in the GOOGLE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). Respondent’s <xn--gogle-vob.com> domain name is confusingly similar to Complainant’s GOOGLE mark because its IDN translation, <goơgle.com>, is virtually identical to the mark, merely using a non-Latin character and adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <xn--gogle-vob.com> domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host third-party hyperlinks.
Respondent registered and uses the <xn--gogle-vob.com> domain name in bad faith. Respondent is a serial cybersquatter who has lost several prior UDRP decisions. Respondent also hosts pay-per-click links at the disputed domain. Respondent also had actual knowledge of Complainant’s rights in the GOOGLE mark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google LLC (“Complainant”) of Mountain View, CA, USA. Complainant was established under the GOOGLE name in 1997 and since that time has continuously offered a broad array of internet related technological products and services under its GOOGLE mark. Complainant is the owner of numerous domestic and international registrations for its GOOGLE mark and variations thereof constituting the family of GOOGLE marks. Complainant’s primary website is located at <google.com> and Complainant owns and operates nearly 200 websites at GOOGLE-formative domain names.
Respondent is Shu Lin (“Respondent”), of Dalian, China. Respondent’s registrar’s address is listed as Victoria, Australia. The Panel notes that the disputed domain name was registered on or about February 18, 2013.
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 asserts rights in the GOOGLE mark based upon the registration with the USPTO (e.g., Reg. No. 2,884,502, registered Sept. 14, 2004). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See 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).”). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <xn--gogle-vob.com> domain name is confusingly similar to Complainant’s GOOGLE mark because its IDN translation, <goơgle.com>, is virtually identical to the mark, merely using a non-Latin character and adding the “.com” gTLD. Panels may compare the internationalized version of a domain name to a mark when determining confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”). The Panel here finds that the disputed domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <xn--gogle-vob.com> domain name since Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here the WHOIS information of record lists “Shu Lin” as the registrant and no evidence is provided to contradict Complainant’s assertion that is has never licensed or authorized Respondent to use the GOOGLE mark. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <xn--gogle-vob.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use but instead merely hosts third-party hyperlinks. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage at the disputed domain, which is a pay-per-click website that makes prominent use of the GOOGLE mark. The Panel here finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent’s hosting of pay-per-click links at the <xn--gogle-vob.com> domain suggests bad faith. Use of a disputed domain name to display pay-per-click hyperlinks can be evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As noted above, Complainant provides a screenshot of the resolving webpage at the disputed domain, which is a pay-per-click website that makes prominent use of the GOOGLE mark. The Panel here finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant further claims that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark when the <xn--gogle-vob.com> domain name was registered. Actual knowledge of a complainant’s rights in a mark evinces bad faith per Policy ¶ 4(a)(iii) and may be found where a mark is well-known. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant claims that the fame and unique qualities of the GOOGLE mark are sufficient to show that Respondent had actual knowledge of Complainant’s rights. The Panel here finds that Respondent had actual knowledge and acted in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--gogle-vob.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 23, 2021
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