Google LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2210002014579
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, US. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), PA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <giigle.com>, <gogooel.com>, <gooelc.com>, <gooelg.com>, <goofge.com>, <googae.com>, <googchrome.com>, <googgmail.com>, <goognle.com>, <googsle.com>, <goojle.com>, <goolde.com>, <gooleapis.com>, <gooodle.com>, <gooogogle.com>, <gooooole.com>, <goopgle.com>, <goosle.com>, <alarmrepairmangooglemail.com>, <cooraygooglemail.com>, <gboogle.com>, <geogle.com>, <geoogle.com>, <ghttpsoogle.com>, <glooglle.com>, <gmailoogle.com>, <gmoogle.com>, <googechina.com>, <googels.com>, <googgles.com>, <googlamps.com>, <googleapartment.com>, <googleapiqs.com>, <googledox.com>, <googlemailx.com>, <googlnaver.com>, <googltagmanager.com>, <goolgedrive.com>, <heartgoogle.com>, <hearthgoogle.com>, <newsdelivery0googlemail.com>, <oogleearth.com>, <oogleusercontent.com>, <passwordgogle.com>, <playgoogal.com>, <qoogleapis.com>, <suppportgoogle.com>, <usagoogl.com>, <videosnoogle.com>, <whatisgooge.com>, <whatisgoogleapis.com>, <whatisgooglemail.com>, <whatisthecurrentgoogleapis.com>, <wwwgogole.com>, <wwwclassroomgoogle.com>, <wwwgoogge.com>, <wwwgooglechat.com> and <wwwgoogledownload.com>
registered with Media Elite Holdings Limited.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on October 3, 2022; Forum received payment on October 3, 2022.
On October 04, 2022, Media Elite Holdings Limited confirmed by e-mail to Forum that the <giigle.com>, <gogooel.com>, <gooelc.com>, <gooelg.com>, <goofge.com>, <googae.com>, <googchrome.com>, <googgmail.com>, <goognle.com>, <googsle.com>, <goojle.com>, <goolde.com>, <gooleapis.com>, <gooodle.com>, <gooogogle.com>, <gooooole.com>, <goopgle.com>, <goosle.com>, <alarmrepairmangooglemail.com>, <cooraygooglemail.com>, <gboogle.com>, <geogle.com>, <geoogle.com>, <ghttpsoogle.com>, <glooglle.com>, <gmailoogle.com>, <gmoogle.com>, <googechina.com>, <googels.com>, <googgles.com>, <googlamps.com>, <googleapartment.com>, <googleapiqs.com>, <googledox.com>, <googlemailx.com>, <googlnaver.com>, <googltagmanager.com>, <goolgedrive.com>, <heartgoogle.com>, <hearthgoogle.com>, <newsdelivery0googlemail.com>, <oogleearth.com>, <oogleusercontent.com>, <passwordgogle.com>, <playgoogal.com>, <qoogleapis.com>, <suppportgoogle.com>, <usagoogl.com>, <videosnoogle.com>, <whatisgooge.com>, <whatisgoogleapis.com>, <whatisgooglemail.com>, <whatisthecurrentgoogleapis.com>, <wwwgogole.com>, <wwwclassroomgoogle.com>, <wwwgoogge.com>, <wwwgooglechat.com> and <wwwgoogledownload.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@giigle.com, postmaster@gogooel.com, postmaster@gooelc.com, postmaster@gooelg.com, postmaster@goofge.com, postmaster@googae.com, postmaster@googchrome.com, postmaster@googgmail.com, postmaster@goognle.com, postmaster@googsle.com, postmaster@goojle.com, postmaster@goolde.com, postmaster@gooleapis.com, postmaster@gooodle.com, postmaster@gooogogle.com, postmaster@gooooole.com, postmaster@goopgle.com, postmaster@goosle.com, postmaster@alarmrepairmangooglemail.com, postmaster@cooraygooglemail.com, postmaster@gboogle.com, postmaster@geogle.com, postmaster@geoogle.com, postmaster@ghttpsoogle.com, postmaster@glooglle.com, postmaster@gmailoogle.com, postmaster@gmoogle.com, postmaster@googechina.com, postmaster@googels.com, postmaster@googgles.com, postmaster@googlamps.com, postmaster@googleapartment.com, postmaster@googleapiqs.com, postmaster@googledox.com, postmaster@googlemailx.com, postmaster@googlnaver.com, postmaster@googltagmanager.com, postmaster@goolgedrive.com, postmaster@heartgoogle.com, postmaster@hearthgoogle.com, postmaster@newsdelivery0googlemail.com, postmaster@oogleearth.com, postmaster@oogleusercontent.com, postmaster@passwordgogle.com, postmaster@playgoogal.com, postmaster@qoogleapis.com, postmaster@suppportgoogle.com, postmaster@usagoogl.com, postmaster@videosnoogle.com, postmaster@whatisgooge.com, postmaster@whatisgoogleapis.com, postmaster@whatisgooglemail.com, postmaster@whatisthecurrentgoogleapis.com, postmaster@wwwgogole.com, postmaster@wwwclassroomgoogle.com, postmaster@wwwgoogge.com, postmaster@wwwgooglechat.com, and postmaster@wwwgoogledownload.com. Also on October 5, 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, Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Google LLC offers internet search engine services and technology products. Complainant asserts rights in the GOOGLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 2,806,075, registered January 20, 2004). Respondent’s <giigle.com>, <gogooel.com>, <gooelc.com>, <gooelg.com>, <goofge.com>, <googae.com>, <googchrome.com>, <googgmail.com>, <goognle.com>, <googsle.com>, <goojle.com>, <goolde.com>, <gooleapis.com>, <gooodle.com>, <gooogogle.com>, <gooooole.com>, <goopgle.com>, <goosle.com>, <alarmrepairmangooglemail.com>, <cooraygooglemail.com>, <gboogle.com>, <geogle.com>, <geoogle.com>, <ghttpsoogle.com>, <glooglle.com>, <gmailoogle.com>, <gmoogle.com>, <googechina.com>, <googels.com>, <googgles.com>, <googlamps.com>, <googleapartment.com>, <googleapiqs.com>, <googledox.com>, <googlemailx.com>, <googlnaver.com>, <googltagmanager.com>, <goolgedrive.com>, <heartgoogle.com>, <hearthgoogle.com>, <newsdelivery0googlemail.com>, <oogleearth.com>, <oogleusercontent.com>, <passwordgogle.com>, <playgoogal.com>, <qoogleapis.com>, <suppportgoogle.com>, <usagoogl.com>, <videosnoogle.com>, <whatisgooge.com>, <whatisgoogleapis.com>, <whatisgooglemail.com>, <whatisthecurrentgoogleapis.com>, <wwwgogole.com>, <wwwclassroomgoogle.com>, <wwwgoogge.com>, <wwwgooglechat.com> and <wwwgoogledownload.com>
(hereafter known as “the disputed domain names”) are
confusingly similar to Complainant’s GOOGLE trademark because they are common misspellings
of the mark and replaces the letters “O” with “I”, “O” with “E”, “L” with “A”,
“G” with “Q”, and “G” with “D”, adds additional letters and numbers “0”, “G”,
“O”, “L”, “D”, “F”, “S”, “J”, “B”, “N”, “E”, “M”, adds descriptive and generic
words “GMAIL”, “HTTPS”, “USER CONTENT”, “WHAT IS”, “CHAT”, “DOWNLOAD”,
“CLASSROOM”, “APIS”, “VIDEOS”, “PLAY”, “EARTH”, “HEART”, “DRIVE”, “NEWS
DELIVERY”, “PASSWORD”, “WWW”, “HEARTH”, “APARTMENT”, “APIQS”, “DOX”, “ALARM
REPAIR”, “MAIL”, “TAG MANAGER”, “NAVER”, and “WHAT IS THE CURRENT APIS”, adds
the geographic term “CHINA”, and adds the generic top-level domain name (“gTLD”)
“.com”.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark, is not commonly known by the disputed domain names, and it used a privacy service to register the disputed domain names. Respondent also does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent hosts pay-per-click advertisements.
Respondent registered and uses the disputed domain names in bad faith by offering to sell several of the domain names. Respondent registered multiple domain names in the instant case and has previously registered domain names containing third-party trademarks. Respondent registered and uses the disputed domain names in bad faith as Respondent attempts to attract users for commercial gain, offering pay-per-click hyperlinks. Respondent’s disputed domain names are in connection with a famous mark. Respondent had actual notice of Complainant’s rights in the GOOGLE mark because of its fame.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the following domain names: <gogooel.com>, <gooelc.com>, <goofge.com>, <googae.com>, <googchrome.com>, <googgmail.com>, <goognle.com>, <googsle.com>, <gooleapis.com>, <gooodle.com>, <gooogogle.com>, <gooooole.com>, <alarmrepairmangooglemail.com>, <cooraygooglemail.com>, <ghttpsoogle.com>, <glooglle.com>, <gmailoogle.com>, <googechina.com>, <googlamps.com>, <googleapartment.com>, <googleapiqs.com>, <googledox.com>, <googlemailx.com>, <googlnaver.com>, <googltagmanager.com>, <goolgedrive.com>, <heartgoogle.com>, <hearthgoogle.com>, <newsdelivery0googlemail.com>, <oogleearth.com>, <oogleusercontent.com>, <passwordgogle.com>, <playgoogal.com>, <qoogleapis.com>, <suppportgoogle.com>, <usagoogl.com>, <videosnoogle.com>, <whatisgooge.com>, <whatisgoogleapis.com>, <whatisgooglemail.com>, <whatisthecurrentgoogleapis.com>, <wwwclassroomgoogle.com>, <wwwgoogge.com>, <wwwgooglechat.com> and <wwwgoogledownload.com>.
The Panel finds Complainant has not established its right to transfer of the remaining domain names: <giigle.com>, <gooelg.com>, <goojle.com>, <goolde.com>, <goopgle.com>, <goosle.com>, <gboogle.com>, <geogle.com>, <geoogle.com>, <gmoogle.com>, <googels.com>, <googgles.com>, and <wwwgogole.com>.
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 registration with the USPTO (e.g., reg. No. 2,806,075, registered January 20, 2004) and other trademark agencies. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Complainant has provided evidence of registration of the GOOGLE mark with the USPTO. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s GOOGLE trademark because they are common misspellings of the mark and replaces letters, adds additional letters and numbers, adds descriptive and generic words, adds a geographic term, and adds the gTLD “.com”. Misspelling, replacing letters, adding additional letters or numbers, adding descriptive or generic words, adding geographic terms, and adding a gTLD do not distinguish a mark from confusing similarity under Policy ¶ 4(a)(i). See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (finding that the addition of the letter ‘s’ in the <tripadvisosr.com> domain name was of no consequence, and thus resulted in a confusing similarity when compared to the complainant’s TRIP ADVISOR trademark); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also 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).”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).). The Panel finds that disputed domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
As set forth below under Registration and Use in Bad Faith, the Panel finds that Complainant is only able to establish bad faith as to certain domain names. The discussion in this section relates only to those domain names.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “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)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator/Fundacion Privacy Services LTD.” This is evidence that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant asserts Respondent does not have rights or legitimate interests in the disputed domain names because it used a privacy service to register the disputed domain names. When the WHOIS information merely lists a privacy service as registrant and failure to provide any evidence to the contrary, the Panel may find there is no basis to find respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Complainant provides WHOIS information showing the registrant name as “Domain Administrator / Fundacion Privacy Services LTD.” The Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent hosts pay-per-click advertisements. Use of a confusingly similar domain name to advertise pay-per-click advertisements does not constitute 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)). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of Respondent’s resolving webpages showing use of pay-per-click advertisements. The Panel finds that Respondent does not provide 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)) and Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant has proved this element.
Complaint’s GOOGLE mark was registered with the USPTO on January 20, 2004. Complainant has not alleged and has offered no evidence of common law rights in the mark before that date.
WIPO Jurisprudential Overview 3.0 provides in part,
Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
Since Respondent’s registration of certain of the disputed domain names predates Complainant’s first claimed rights in the GOOGLE mark, as to those names, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
The Panel finds Complainant has not proved bad faith registration and use as to those domain names registered before January 20, 2004, the registration date of Complainant’s mark.
The following discussion relates only to those domain names registered after the date of Complainant’s trademark registration.
Complainant contends Respondent registered and uses the disputed domain names in bad faith by offering to sell several of the domain names. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides screenshots of Respondent’s resolving webpages showing offerings to sell several domain names. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant argues Respondent registered the disputed domain names in bad faith because it registered 58 domain names in the instant case and has previously registered domain names containing third-party trademarks. Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides WHOIS information for the disputed domain names showing they were registered under the same registrant name. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts Respondent registered and uses the disputed domain names as an attraction for commercial gain through pay-per-click advertisements. Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Complainant provides screenshots of Respondent’s resolving webpages showing use of pay-per-click advertisements. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant contends Respondent registered and uses the disputed domain names in bad faith because they are in connection with a famous mark. Finding bad faith where (1) the respondent knew or should have known of the complainant’s famous marks and (2) the respondent made no use of the domain name per Policy ¶ 4(a)(iii). See TV Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) the respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site). Complainant provides lists of its awards and rankings as a business, showing its fame. This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant argues Respondent had actual notice of its rights in the GOOGLE mark because of its fame. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (FORUM January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant provides lists of its awards and rankings as a business, showing its fame. The Panel finds that Respondent has actual knowledge of Complainant’s mark and that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to certain domain names.
Accordingly, it is ORDERED that the <gogooel.com>, <gooelc.com>, <goofge.com>, <googae.com>, <googchrome.com>, <googgmail.com>, <goognle.com>, <googsle.com>, <gooleapis.com>, <gooodle.com>, <gooogogle.com>, <gooooole.com>, <alarmrepairmangooglemail.com>, <cooraygooglemail.com>, <ghttpsoogle.com>, <glooglle.com>, <gmailoogle.com>, <googechina.com>, <googlamps.com>, <googleapartment.com>, <googleapiqs.com>, <googledox.com>, <googlemailx.com>, <googlnaver.com>, <googltagmanager.com>, <goolgedrive.com>, <heartgoogle.com>, <hearthgoogle.com>, <newsdelivery0googlemail.com>, <oogleearth.com>, <oogleusercontent.com>, <passwordgogle.com>, <playgoogal.com>, <qoogleapis.com>, <suppportgoogle.com>, <usagoogl.com>, <videosnoogle.com>, <whatisgooge.com>, <whatisgoogleapis.com>, <whatisgooglemail.com>, <whatisthecurrentgoogleapis.com>, <wwwclassroomgoogle.com>, <wwwgoogge.com>, <wwwgooglechat.com> and <wwwgoogledownload.com>. domain names be TRANSFERRED from Respondent to Complainant.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED as to certain domain names.
Accordingly, it is ORDERED that the <giigle.com>, <gooelg.com>, <goojle.com>, <goolde.com>, <goopgle.com>, <goosle.com>, <gboogle.com>, <geogle.com>, <geoogle.com>, <gmoogle.com>, <googels.com>, <googgles.com>, and <wwwgogole.com> domain names REMAIN with Respondent.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
November 17, 2022
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