Google LLC v. Nanci Nette / Name Management Group / Nette, Nanci
Claim Number: FA2110001970614
Complainant is Google LLC (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Nanci Nette / Name Management Group / Nette, Nanci (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> , registered with Dynadot, Llc, Namewinner LLC, SNAPNAMES 85, LLC, BigRock Solutions Ltd, Indirection Identity, LLC, Network Solutions, LLC, Easy Street Domains, LLC, and Abbey Road Domains 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 26, 2021.
On October 26 and 29, 2021 and on November 02, 2021, Dynadot, Llc, Namewinner LLC, SNAPNAMES 85, LLC, BigRock Solutions Ltd, Indirection Identity, LLC, Network Solutions, LLC, Easy Street Domains, LLC, and Abbey Road Domains LLC confirmed by e-mail to the Forum that the <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names are registered with Dynadot, Llc, Namewinner LLC, SNAPNAMES 85, LLC, BigRock Solutions Ltd, Indirection Identity, LLC, Network Solutions, LLC, Easy Street Domains, LLC, and Abbey Road Domains LLC and that Respondent is the current registrant of the names. Dynadot, Llc, Namewinner LLC, SNAPNAMES 85, LLC, BigRock Solutions Ltd, Indirection Identity, LLC, Network Solutions, LLC, Easy Street Domains, LLC, and Abbey Road Domains LLC have verified that Respondent is bound by the Dynadot, Llc, Namewinner LLC, SNAPNAMES 85, LLC, BigRock Solutions Ltd, Indirection Identity, LLC, Network Solutions, LLC, Easy Street Domains, LLC, and Abbey Road Domains LLC registration agreements 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 November 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@googleacademy.com, postmaster@androidprotv.com, postmaster@asdfyoutube.com, postmaster@flvtoyoutube.com, postmaster@queflandroid.com, postmaster@rgmail.com, postmaster@youtu-be.com, postmaster@youtube-audio.com. Also on November 8, 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 December 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a well-known technology company and search engine provider. Complainant has rights in the GOOGLE, ANDROID, YOUTUBE, and GMAIL marks (hereinafter “the GOOGLE marks”) through its registrations with multiple trademark agencies, including the USPTO (e.g., GOOGLE Reg. 4,123,471, registered Apr. 10, 2012; ANDROID Reg. 4,692,657, registered Feb. 24, 2015; GMAIL Reg. 3,150,462, registered Oct. 3, 2006; YOUTUBE Reg. 3,525,802, registered Oct. 28, 2008). See Amend. Compl. Ex. G. Respondent’s <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names are identical or confusingly similar to Complainant’s marks as they incorporate the marks in their entireties and add a variety of generic or descriptive words, letters, hyphens, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its marks in the domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead uses the disputed domain names’ resolving websites to host parked pay-per-click links that redirect to commercial websites, as well as websites that host malware, or inactive websites. Furthermore, Respondent offers the <rgmail.com> domain name for sale.
Respondent registered and uses the <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names in bad faith. Respondent has exhibited a pattern of bad faith registration and use. Additionally, Respondent attracts internet users for commercial gain by hosting parked pay-per-click links on the disputed domain names’ resolving websites. Respondent also hosts malware on the disputed domain name’s resolving websites. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the GOOGLE, YOUTUBE, ANDROID, and GMAIL marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the prominent and well-known technology company and search engine provider.
2. Complainant has established its trademark rights in the GOOGLE, ANDROID, YOUTUBE, and GMAIL marks (hereinafter “the GOOGLE marks”) through its registrations with multiple trademark agencies, including the USPTO (e.g., GOOGLE Reg. 4,123,471, registered Apr. 10, 2012; ANDROID Reg. 4,692,657, registered Feb. 24, 2015; GMAIL Reg. 3,150,462, registered Oct. 3, 2006; YOUTUBE Reg. 3,525,802, registered Oct. 28, 2008).
3. Respondent registered the disputed domain names on the following dates:
<googleacademy.com> on Apr. 13, 2019, <androidprotv.com> on March 11, 2021, <asdfyoutube.com> on Jan. 26, 2021, <flvtoyoutube.com> on October 27, 2021, <queflandroid.com> on Jan. 7, 2021, <rgmail.com> on Aug. 7, 2000, <youtu-be.com> on June 26, 2020, and <youtube-audio.com> on Dec. 6, 2020.
4. Respondent uses the disputed domain names’ resolving websites to host parked pay-per-click links that redirect to commercial websites, as well as websites that host malware, or inactive websites. Respondent also offers the <rgmail.com> domain name for sale.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GOOGLE, ANDROID, YOUTUBE, and GMAIL marks (hereinafter “the GOOGLE marks”) through its registrations with multiple trademark agencies, including the USPTO (e.g. GOOGLE Reg. 4,123,471, registered Apr. 10, 2012; ANDROID Reg. 4,692,657, registered Feb. 24, 2015; GMAIL Reg. 3,150,462, registered Oct. 3, 2006; YOUTUBE Reg. 3,525,802, registered Oct. 28, 2008). See Compl. Ex. G. Registration with the USPTO is generally sufficient in demonstrating 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).”). Therefore, as the Panel agrees, it finds Complainant has rights in the GOOGLE marks through its registrations under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to the GOOGLE marks. Complainant argues that Respondent’s <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names (hereinafter “the disputed domain names”) are identical or confusingly similar to Complainant’s GOOGLE marks. Under Policy ¶ 4(a)(i), adding generic or descriptive words, letters, hyphens, and the “.com” gTLD are all generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see additionally Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). The disputed domain names incorporate the GOOGLE marks in their entireties and add a variety of words including “academy,” “pro tv,” and “audio”; a variety of letters including “r,” “flvto,” “quefl”; hyphens, and the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain names are identical or confusingly similar to Complainant’s GOOGLE marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
(a) Respondent has chosen to take Complainant’s GOOGLE marks and to use them in its domain names, adding a variety of words including “academy,” “pro tv,” and “audio”; a variety of letters including “r,” “flvto,” “quefl”; hyphens,which do not negate the confusing similarity between the domain names and the marks;
(b) Respondent registered the disputed domain names on the following dates:<googleacademy.com> on Apr. 13, 2019, <androidprotv.com> on March 11, 2021, <asdfyoutube.com> on Jan. 26, 2021, <flvtoyoutube.com> on October 27, 2021, <queflandroid.com> on Jan. 7, 2021, <rgmail.com> on Aug. 7, 2000, <youtu-be.com> on June 26, 2020, and <youtube-audio.com> on Dec. 6, 2020;
(c) Respondent uses the disputed domain names’ resolving websites to host parked pay-per-click links that redirect to commercial websites, as well as websites that host malware, or inactive websites. Respondent also offers the <rgmail.com> domain name for sale.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its GOOGLE marks in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Nanci Nette” of “Name Management Group”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its GOOGLE marks in the disputed domain names. See Registrar Verification Emails. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked pay-per-click links that redirect to various commercial sites, hosting malware, and/or inactively holding a disputed domain name’s resolving website do not constitute a bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. 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); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see additionally 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 does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the disputed domain names, which mostly feature parked, pay-per-click links that redirect to various commercial websites, further pay-per-click websites, and websites prompting computer downloads that may be malware. See Amend. Compl. Ex. H. The <flvtoyoutube.com> domain name resolves to an inactive website. See id. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent lacks rights and legitimate interests in the <rgmail.com> domain name. Under Policy ¶ 4(a)(ii), offering a domain name for sale for a cost far in excess of what it was acquired for indicates a lack of rights and legitimate interests in the domain name. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). The Panel notes Complainant’s screenshots of the disputed domain names’ WHOIS information and resolving website, which offer the domain name for sale. See Amend. Compl. Exs. B & H. Therefore, as the Panel agrees, it finds Respondent lacks rights and legitimate interests in the disputed domain name <rgmail.com> under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), where a Respondent has a history of adverse UDRP proceedings against it, and/or has multiple domain names at issue in the current proceeding, past panels have found a pattern of bad faith registration and use. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)). The Panel notes the multiple domain names at issue in this case, and Complainant’s citation of previous UDRP Proceedings where Respondent allegedly had domain names transferred from its possession. See Amend. Compl. ¶ 34. Therefore, as the Panel agrees, it finds Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the disputed domain names in bad faith to attract users for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to host competing content or pay-per-click links may be evidence of bad faith attraction for commercial gain. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which offered pay-per-click links and/or redirects to unrelated third-parties. See Amend. Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Thirdly, the Panel notes the evidence showing that Respondent registered and uses the <flvtoyoutube.com> domain name in bad faith by inactive holding. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name may be evidence of bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls that this specific disputed domain name resolves to a website with no content. See Amend. Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent registered and uses the disputed domain names in bad faith. Under Policy ¶ 4(a)(iii), using a disputed domain name to host malicious software is generally considered evidence of bad faith. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The Panel recalls Complainant’s screenshot of the disputed domain names’ resolving websites, which features a message prompting the user to download purported browsing software, which Complainant argues is actually malware. See Amend. Compl. Exs. H & I. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the GOOGLE, YOUTUBE, ANDROID, and GMAIL marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established based on the fame of the mark, as well as Respondent’s use of a disputed domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”). The Panel recalls that the disputed domain names incorporate Complainant’s GOOGLE marks, and resolve to websites, some of which feature links to various products and services. See Amend. Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the GOOGLE marks under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleacademy.com>, <androidprotv.com>, <asdfyoutube.com>, <flvtoyoutube.com>, <queflandroid.com>, <rgmail.com>, <youtu-be.com>, and <youtube-audio.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 7, 2021
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