Google LLC v. John / Gmailnator
Claim Number: FA2205001996702
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is John / Gmailnator (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmailnator.com>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2022; the Forum received payment on May 17, 2022.
On May 18, 2022, Hostinger, UAB confirmed by e-mail to the Forum that the <gmailnator.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2022 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@gmailnator.com. Also on May 19, 2022, 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 June 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, Google LLC, operates as an internet search service.
Complainant has rights in the GMAIL mark through its registration with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) and Office of Harmonization in the Internal Market (“OHIM”).
Respondent’s <gmailnator.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the term “nator” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <gmailnator.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its GMAIL mark in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the at-issue domain name to divert internet users to respondent’s website and generate advertising revenue.
Respondent registered and uses the <gmailnator.com> domain name in bad faith. Respondent is seeking to attract Internet users to the disputed domain name for commercial gain while disrupting Complainant’s business. Respondent registered the at-issue domain name with actual knowledge of Complainant’s rights in the GMAIL mark. Additionally, Respondent failed to respond to Complainant’s demand letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GMAIL mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its GMAIL trademark.
Respondent uses the <gmailnator.com> domain name to address a website offering Complainant’s services to third-parties and displaying advertisements.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has multiple national registrations for its GMAIL trademark. A single national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.).
Respondent’s at-issue domain name contains Complainant’s GMAIL trademark followed by the term “nator” with all followed by the “.com” top-level. The differences between Complainant’s trademark and the at-issue domain name are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that the <gmailnator.com> domain name is confusingly similar to Complainant’s GMAIL trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing an at-issue domain name from a mark under Policy ¶ 4(a)(i).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
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 legitimate interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “John / Gmailnator” as the domain name’s registrant and there is nothing in the record that persuasively shows Respondent is commonly known by <gmailnator.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <gmailnator.com> domain name addresses a website dressed with the GMAIL mark and logo, lacking disclaimers regarding its affiliation with GMAIL, and offering to create GMAIL email accounts for free for third parties. Respondent monetizes such activities through advertising revenue and by offering a premium paid version of the service, all in violation of Complainant’s GMAIL Program Policies. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the <gmailnator.com> domain name pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a website that pretends to be affiliated with or authorized by Complainant. There, Respondent features products or services that are offered by Complainant and monetizes the website by displaying advertisements. Such activities are contrary to Complainant’s GMAIL Program Policies which prohibit creating GMAIL accounts by automated means or buying, selling, trading, or re-selling GMAIL accounts to others. Respondent’s use of <gmailnator.com> thus demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also, Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”).
Moreover, Respondent registered the at-issue domain name knowing that Complainant had trademark rights in the GMAIL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s uses of the domain name as discussed elsewhere herein. Indeed, Respondent’s domain name is such an obvious reference to Complainant’s famous trademark that any good faith use by Respondent is near impossible, if not impossible. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <gmailnator.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmailnator.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 14, 2022
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