Google LLC v. asset manager / gv, llc
Claim Number: FA2210002016856
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, US. Respondent is asset manager / gv, llc (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <giogle.com>, ,<giogles.com>, ,<googlk.com>, ,<googapps.com>, ,<googlechallenge.com>, ,<youtubechallenge.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on October 20, 2022; Forum received payment on October 20, 2022.
On October 24, 2022, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to Forum that the <giogle.com>, ,<giogles.com>, ,<googlk.com>, ,<googapps.com>, ,<googlechallenge.com>, ,<youtubechallenge.com> domain names are registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the names. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@giogle.com, postmaster@giogles.com, postmaster@googlk.com, postmaster@googapps.com, postmaster@googlechallenge.com, postmaster@youtubechallenge.com. Also on October 25, 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.
On November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
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 states that it was created in 1998 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, Complainant’s search engine has become one of the most highly recognized Internet search services in the world. Complainant’s primary website is < www.google.com>. Complainant has rights in the GOOGLE mark through its registration in the United States in 2004 (filing date September 16, 1999). The mark is registered elsewhere around the world and it is famous.
Complainant also states that the YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. The <youtube.com> website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service. The popularity of the <youtube.com> website grew quickly. In July 2006, Nielsen Netratings named <youtube.com> the fastest growing website between January and June 2006. The website ended that period with a monthly unique audience of 19.6 million, and with 724 million web page views. In August 2006, the Wall Street Journal reported that the <youtube.com> website hosted approximately 6.1 million videos and had about 500,000 user accounts. Time magazine hailed YouTube as the best invention of the year in its 2006 edition. In November 2006, Google acquired YouTube, Inc., and in 2007 was assigned the YOUTUBE mark and YouTube, Inc.’s other marks and their associated goodwill. In February 2007, Brandchannel announced that the YOUTUBE brand ranked third in its 2006 Reader’s Choice Awards, behind only GOOGLE and APPLE. By November of that year, comScore reported that YouTube users watched 2.9 billion videos and Nielsen Netratings reported that the service had 67.5 million unique users. Since then, YouTube rapidly became the leading online video sharing site that it is today. For 2013, Nielsen Netratings rated YouTube as the fifth “Top U.S. Web Brand” and the number one “U.S. Online Video Brand” with more than 128 million unique viewers. Interbrand recently ranked YouTube as the #30 best global brand. According to Alexa, YouTube is currently the second most viewed website in the world and it ranks in the top ten in numerous countries. Today, YouTube has more than 2 billion monthly logged-in users, and more than 500 hours of content are uploaded to YouTube every minute. There are localized versions of YouTube in more than 100 countries around the world and across 80 languages, making YouTube accessible to more than 95% of the world’s Internet users. Each day, people watch more than a billion hours of video on YouTube and generate billions of views. Complainant’s YouTube service reaches more 18-34 and 18-49 year olds in the U.S. than any television network (broadcast or cable) – and it does that on the YouTube mobile platform alone. Complainant has rights in the YOUTUBE mark through its registration with multiple trademark agencies, including in the United States in 2009.
Complainant alleges that the disputed domain names are nearly identical and confusingly similar to its GOOGLE or YOUTUBE marks, because they differ from the marks only by the addition of descriptive words like “challenge” or “app”, or they are common misspellings like “giogle” and “googlk”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in any way. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, the resolving websites all display pay-per-click advertising links to products and services that compete with those of Complainant. Respondent is offering to sell some of the disputed domain names for a price in excess of out-of-pocket costs. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. The resolving websites all display pay-per-click advertising links to products and services that compete with those of Complainant. Respondent is offering to sell some of the disputed domain names for a price in excess of out-of-pocket costs. Respondent engaged in typosquatting. Respondent has a pattern of bad faith use and registration. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in its marks. Respondent used a privacy service. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks GOOGLE and YOUTUBE and uses them to provide a variety of online services. The marks are famous.
Complainant’s rights in its marks date back to, respectively, 1999 and 2009.
The disputed domain names were registered on the following dates:
|
giogle.com |
2006 |
|
giogles.com |
2012 |
|
googlk.com |
2003 |
|
googaps.com |
2021 |
|
googlechallenge.com |
2013 |
|
youtubechallenge.com |
2013 |
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites all display pay-per-click advertising links to products and services that compete with those of Complainant. Respondent is offering to sell some of the disputed domain names for a price in excess of out-of-pocket costs. Respondent engaged in a pattern of bad faith registration and use.
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 relevant date for the mark GOOGLE is the filing date, namely 1999, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The disputed domain names differ from Complainant’s marks only by the addition of descriptive words like “challenge” or “app”, or they are common misspellings like “giogle” and “googlk”. Such changes are insufficient to distinguish the domain names from Complainant’s marks under Policy ¶ 4(a)(i) analysis for confusing similarity. Google Inc. v. Jon G., FA106084 (Apr. 26, 2002) (ordering transfer of “googel.com” and noting that “The transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.”); see also Google Inc. v. PPA Media Services / Ryan G Foo, FA1468207 (Dec. 12, 2012) (ordering transfer of typo domain name “googld.com”); see also Google Inc. v. signupgoogleadsense, FA1474818 (Forum Jan. 22, 2013) (“The addition of a generic term does not adequately distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i).”). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not licensed or permitted Respondent to use its marks. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record shows that the registrant is “asset manager / gv, llc”. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain names.
The resolving websites all display pay-per-click advertising links to products and services that compete with those of Complainant. Previous Panels have found that competing hyperlinks, offers of competing services, and pay-per-click links are not a bona fide or legitimate noncommercial or fair use of a disputed domain name. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use); see also 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.”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or (iii).
Further, two of the resolving websites also offer the respective disputed domain names for sale at a price far higher than out-of-pocket costs. Panels have found that when a complainant offers a disputed domain name for sale it is further evidence that a respondent lacks rights or legitimate interests in the domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Thus the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
For all the above reasons, the Panel finds that Complainant does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites all display pay-per-click advertising links to products and services that compete with those of Complainant. This is evidence of bad faith registration and use under the Policy. See 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).”); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). Thus the Panel finds bad faith use and registration under Policy ¶¶ 4(b)(iii) and (iv).
Further, also as already noted, Respondent offered two of the disputed domain names for sale for a price in excess of out-of-pocket costs. Thus the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Further, Complainant provides evidence showing that Respondent has been found to have registered and used domain names in bad faith in two prior UDRP cases. In addition, as noted above, the Panel finds that Complainant registered and uses the disputed domain names in bad faith. Thus Complainant has been found to have registered and used many domain names in bad faith. This is sufficient to establish a pattern of bad faith registration and use under the Policy. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1520008 (Forum Nov. 7, 2013) (respondent’s registration of multiple infringing domain names established a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally, by registering domain names that are misspellings of Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. Zhichao Yang, FA2110001970133 (Forum Nov. 24, 2021) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse the misspelled trademark laden domain name with its target trademark, a web address, an email address, or some other reference to the mark holder.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use). As such, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <giogle.com>, ,<giogles.com>, ,<googlk.com>, ,<googapps.com>, ,<googlechallenge.com>, ,<youtubechallenge.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 17, 2022
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