Google LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2110001969952
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlematrix.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2021; the Forum received payment on October 20, 2021.
On October 22, 2021, the Registrar confirmed by e-mail to the Forum that the <googlematrix.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@googlematrix.com. Also on October 25, 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 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known, worldwide search engine. Complainant contends that it has rights in the GOOGLE trademark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered on September 14, 2004) (hereinafter collectively referred to as the “GOOGLE Mark”).
Complainant claims that Respondent’s <googlematrix.com> disputed domain name is identical or confusingly similar to Complainant’s GOOGLE Mark, as it incorporates the mark in its entirety, only adding the descriptive term “matrix” and the “.com” generic top-level domain (“gTLD”).
In addition, Complainant claims that Respondent has no rights or legitimate interests in the disputed as, among other reasons, Complainant has not authorized or licensed Respondent to use the GOOGLE Mark, nor is Respondent using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the resolving website attempts to download malware on users’ computers.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent has a pattern of registering domain names of other well-known brands, Respondent facilitated the dissemination of malware onto users’ computers, and Respondent 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.
The Panel finds that Complainant holds valid trademark rights in the GOOGLE Mark. The disputed domain name is confusingly similar to Complainant’s GOOGLE Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has rights in the GOOGLE Mark through its registration with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 2,884,502, registered on September 14, 2004). Registration of a mark with multiple trademark authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel concludes that Complainant has demonstrated rights in the GOOGLE Mark for the purposes of Policy ¶ 4(a)(i).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s GOOGLE Mark as the disputed domain name incorporates the entirety of the GOOGLE Mark, adding the dictionary or descriptive term “matrix”, followed by the “.com” gTLD. Adding dictionary or descriptive terms and a gTLD to a complainant’s mark does not distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Respondent created a likelihood of confusion with Complainant and its GOOGLE Mark by registering a disputed domain name that incorporates in its entirety Complainant’s GOOGLE Mark, merely adding a term and the “.com” gTLD.
Second, the fame of the GOOGLE Mark, which was adopted by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the GOOGLE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). As noted above, the GOOGLE Mark is widely known worldwide. It therefore strains credulity to believe that Respondent had not known of the Complainant or its GOOGLE Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, the Panel finds that Respondent was using the disputed domain name in bad faith as Respondent was distributing malware on the disputed domain name’s resolving webpage. Registering a disputed domain name to divert Internet users to a resolving webpage that hosts and distributes malware is evidence of bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Finally, the Panel finds that Respondent engaged in a pattern of bad faith registration and use by engaging in a pattern of cybersquatting. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlematrix.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: November 29, 2021
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