Google LLC v. CHANGKYUM KIM
Claim Number: FA2208002009455
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is CHANGKYUM KIM (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlewph.com>, registered with FastDomain Inc..
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.
Luca Barbero as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2022; the Forum received payment on August 23, 2022.
On August 23, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the <googlewph.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 August 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@googlewph.com. Also on August 24, 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.
A timely Response was received and determined to be complete on September 12, 2022.
On September 21, 2022 additional submissions were received by both parties and on the same date, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that its GOOGLE Mark is one of the most valuable brands in the world and contends that the disputed domain name is confusingly similar to its GOOGLE Mark.
Complainant states that Respondent has no rights or legitimate interests in the <googlewph.com> domain name as Complainant has not authorized or permitted Respondent to use its GOOGLE Mark in any way.
Complainant further contends that Respondent is not commonly known by the <googlewph.com> domain name and has failed to use it in connection with a bona fide offering of goods or services or a legitimate, non-commercial or fair use, as he is using the disputed domain name in connection with a commercial website that provides some of the same or similar services provided by Complainant.
Complainant submits that Respondent could not have been unaware of Complainant and its well-known GOOGLE Mark when registering the <googlewph.com> domain name and that Respondent’s registration infringes upon Complainant’s intellectual property rights.
In addition, Complainant emphasizes that Respondent is using the <googlewph.com> domain name in connection with a commercial website that provides, among other things, online retail and product review services that are the same as - or similar to - the services provided by Complainant and displays also third-party commercial ads for products by Apple and other companies.
Moreover, Complainant highlights that Respondent’s website includes many third-party advertisements from which Respondent presumably receives a commission each time a consumer inadvertently visits Respondent’s website and/or clicks on one of the third-party ads.
Lastly, Complainant underlines that Respondent’s bad faith is further demonstrated by evidence that the <googlewph.com> domain name has been used in connection with malicious activities, including phishing, as shown in a screenshot from VirusTotal provided as Exhibit F to the Complaint, showing a vendor report identifying the <googlewph.com> domain name as a risk for malicious activity and phishing.
B. Respondent
Respondent replies to Complainant’s contentions stating that his <googlewph.com> domain name is not confusingly similar to Complainant’s GOOGLE Mark because the use he is making of the domain name is different, especially in virtue of the addition of the acronym “wph” (which would stand for “word press hosting”).
Respondent further asserts that domain names are often similar and therefore small differences may be enough to distinguish a domain name from a mark.
With reference to rights and legitimate interests, Respondent contends that considering he actively used the <googlewph.com> domain name for over half a year and has made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services with the aim of offering a service which is in no way similar to that of the Complainant, he does not lack rights or legitimate interests in the <googlewph.com> domain name.
Respondent further indicates that Complainant’s allegations on Respondent’s bad faith are unfounded since Complainant failed to provide evidence to support such a holding and argues that he did not register the <googlewph.com> domain name in bad faith because he is not using it for any marketing activities or for profit.
Moreover, Respondent asserts that he does not participate in phishing activities.
C. Additional Submissions
Complainant
With regards to Respondent’s statements concerning the use of the <googlewph.com> domain name and the fact that the purpose of the website bears no relation to the services provided by Complainant, Complainant contends that a screenshot submitted with the Response suggests that a significant number (thousands) of people are being confused and directed to Respondent’s website after running searches for “Google” and its services and many others apparently arrive at Respondent’s website after being directed there via social media sites.
Complainant highlights that such admissions support its allegations that Respondent registered and is using the <googlewph.com> domain name in bad faith to profit from confused consumers that are searching for Complainant’s services.
Secondly, Complainant argues that, in his Response, Respondent does not dispute any of Complainant’s claims regarding bad faith use and underlines that Respondent’s claim that he is not using the website for phishing purposes is contradicted by the proof supplied by Complainant and that Respondent’s undisputed use of the <googlewph.com> domain name in connection with a commercial website is sufficient to support a decision ordering the transfer of the <googlewph.com> domain name to Complainant.
Respondent
Respondent rebuts the first assertion in Complainant’s additional submission and claims that, before landing on the website to which the <googlewph.com> domain name resolves, users naturally carry out a keyword search first. Respondent submits that the fact that users land on his website is purely coincidental and does not mean he deliberately intended to divert users to his website.
In response to Complainant’s second allegation, Respondent argues he made no claims regarding the possibility that the disputed domain name could have been infringing Complainant’s rights, because he has no legal knowledge.
He also submits that, at the time of registering the disputed domain name, he was in no way provided an indication as to the fact that his registration would have infringed Complainant’s rights and states that he had thought of using the name “googlewph” (where the “wph” suffix would stand for “word press hosting”) because he “was trying to create a wordpress and wanted to work on a domain on Google”.
Complainant is a Delaware limited liability company located in Mountain View, California.
The GOOGLE name and company were created in 1998 by Stanford Ph.D. candidates Larry Page and Sergey Brin and since then, the Google search engine has become one of the most highly recognized Internet search services in the world. The GOOGLE Mark is routinely included in global lists of top brands and in 2020, Forbes ranked GOOGLE the second most-valuable brand globally.
Complainant uses its GOOGLE Mark to provide a wide range of goods and services in addition to its core search engine services, including online retail and product ratings.
Complainant is the owner of numerous trademark registrations worldwide for GOOGLE, including the following, as per excerpts of the trademark registration details submitted as Exhibit D to the Complaint:
- European Union trademark registration No. 001104306 for GOOGLE (word mark), filed on March 12, 1999 and registered on October 7, 2005, in classes 9, 35, 38 and 42;
- United Kingdom trademark registration No. UK00002410931 for GOOGLE (word mark), filed on January 12 2006 and registered on June 15, 2007, in classes 9, 16, 25, 35, 38, 41 and 42;
- United Kingdom trademark registration No. UK00002430114 for GOOGLE (word mark), filed on August 17, 2006 and registered on October 26, 2007, in classes 36 and 38;
- United States trademark registration No. 2806075 for GOOGLE (word mark), filed on September 16, 1999 and registered on January 20, 2004, in international classes 38 an 42;
- South Korea trademark registration No. 4500012910000 for GOOGLE (word mark), filed on March 15, 1999 and registered on June 2, 2000, in classes 09, 35, 38 and 42.
Complainant is also the owner the domain name <google.com>, registered on September 15, 1997 and used by Complainant to provide and promote its services under the GOOGLE Mark. In addition, Complainant owns and operates hundreds of additional GOOGLE-formative domain names, including nearly every existing top-level country code domain consisting solely of the GOOGLE Mark.
The <googlewph.com> domain name was registered on February 9, 2021 and redirects to a website written primarily in Korean that provides online retail and product review services, displaying also sponsored banners in English which advertise third-party products and services.
Rules ¶ 15(a) 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."
Policy ¶ 4(a) 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.
Complainant has provided evidence of ownership of several trademark registrations for the GOOGLE Mark, including the United States trademark registration No. 2806075 for GOOGLE (word mark), filed on September 16, 1999 and registered on January 20, 2004, in international classes 38 and 42, and the South Korea trademark registration No. 4500012910000 for GOOGLE (word mark), filed on March 15, 1999 and registered on June 2, 2000, in classes 09, 35, 38 and 42.
Registration of a mark with multiple trademark agencies is considered a valid showing of rights in a mark under Policy ¶ 4(a)(i). See 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.”)
The <googlewph.com> domain name reproduces the GOOGLE Mark in its entirety with the mere addition of a three-letter suffix “wph” and the generic Top-Level Domain “.com”. The addition of letters and a gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein according to Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”)
Therefore, the Panel finds that Complainant has proven that the <googlewph.com> domain name is confusingly similar to a trademark in which Complainant has established rights under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <googlewph.com> 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”.)
According to the evidence on record, there is no relationship between Complainant and Respondent, and Complainant has not authorized Respondent to register or use its GOOGLE Mark or the <googlewph.com> domain name.
Moreover, there is no indication before the Panel that Respondent, whose name is “Changkyum Kim” according to the WHOIS information, is commonly known by the <googlewph.com> domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record listed “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Furthermore, the Panel finds that Complainant has demonstrated that Respondent has not made preparations to use the <googlewph.com> domain name in connection with a bona fide offering of goods or services or a legitimate, non-commercial or fair use and Respondent has not provided in the Response any convincing evidence to the contrary.
As mentioned above, the <googlewph.com> domain name has been pointed to a website that provides online retail and product review services which are similar to some of the services provided by Complainant under the GOOGLE Mark. Moreover, Respondent’s website also displays sponsored banners which advertise third-party products and services.
The Panel also notes that Respondent has failed to provide any plausible explanation as to the reason why he selected the <googlewph.com> domain name and that, while the three letters encompassed in the disputed domain name “wph” might stand for the acronym “word press hosting” as stated by Respondent, there appears to be no reasonable explanation for adopting GOOGLE in the <googlewph.com> domain name other than to refer to Complainant’s GOOGLE Mark.
In view of the above-described use of the <googlewph.com> domain name, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark.
See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use.)
As to bad faith at the time of the registration, the Panel finds that, in light of the prior registration and use of the GOOGLE Mark since 1997 in connection with the services provided by Complainant and considering the notoriety of the GOOGLE Mark, Respondent was very likely aware of Complainant’s mark when it registered the <googlewph.com> domain name.
Moreover, in view of the well-known character of Complainant’s trademark, the Panel finds that Respondent acted in opportunistic bad faith at the time of registration, since the <googlewph.com> domain name is so obviously connected with Complainant that its selection by Respondent, who has no connection with Complainant, suggests that the <googlewph.com> domain name was registered with a deliberate intent to create an impression of an association with Complainant. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”.)
The Panel also finds that, by pointing the <googlewph.com> domain name to a commercial website that provides online retail and product review services and displays sponsored banners advertising third-party products and services, Respondent has intentionally attempted to attract Internet users to his website for commercial gain, by causing a likelihood of confusion with the GOOGLE Mark as to the source, sponsorship, affiliation or endorsement of his website and the products and services promoted therein according to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlewph.com> domain name be TRANSFERRED from Respondent to Complainant.
Luca Barbero, Panelist
Dated: October 5, 2022
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