Google LLC v. David Rose / Judy Lay / John Hofner
Claim Number: FA2301002028914
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, USA. Respondent is David Rose / Judy Lay / John Hofner (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names listed in the complaint are <centralgoogle.com>, <google-updata.com>, <googleanalyticstag.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
For the reasons given below, the Panel finds that the only relevant domain name for this case is <centralgoogle.com>.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 26, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <centralgoogle.com>, <google-updata.com>, <googleanalyticstag.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2023 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@centralgoogle.com, postmaster@google-updata.com, postmaster@googleanalyticstag.com. Also on January 27, 2023, 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 February 21, 2023, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states (emphasis in original):
a) The WHOIS information for the domain name <centralgoogle.com> likely is false, as is evidenced by the fact that the same name and email address was in WHOIS records for another domain name using an incomplete / fake address in “Glasgow London” with a different phone number;
b) the WHOIS information for the other two domain names is false: the physical addresses do not exist;
c) all three domain names incorporate Complainant’s mark;
d) all three domain names were registered with the same registrar;
e) the three domain names were registered between 2020 and 2022;
f) the three domain names used the same privacy service; and
g) critically, the three domain names all use the same IP address.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
By consulting publicly available records, the Panel has found that the street address for the <centralgoogle.com> domain name does exist. The fact that a “David Rose” registered a different domain name with a non-existent address does not prove that the same individual registered the <centralgoogle.com>; much less does it prove that the same individual registered the two other domain names listed in the instant case.
The Panel finds that allegations (c) through (f) above do not necessarily indicate that the domain names are under common control.
By consulting public records, the Panel has found that the IP address referred to in allegation (g) above belongs to Akamai, a well-known cloud services provider. Thus the fact that the three domain names use the same IP address does not necessarily indicate that they are under common control.
Thus the Panel finds that Complainant has not presented sufficient evidence to find that all three disputed domain names were registered by the same person or entity.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule only on the <centralgoogle.com> domain name, and it will dismiss, without prejudice, the complaint regarding the <google-updata.com>, <googleanalyticstag.com> domain names. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec 17, 2021).
A. Complainant
Complainant states that the GOOGLE name and company were created in 1998 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the Google search engine has become one of the most highly recognized Internet search services in the world. Complainant has rights in the GOOGLE mark through numerous trademark registrations in multiple jurisdictions, including in the United States in 2004. The mark is famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its GOOGLE mark as it incorporates the mark in its entirety and merely adds the descriptive/generic term “central” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent takes advantage of the GOOGLE mark to deceive Internet users as part of a phishing scheme. In addition, Complainant has strong trademark rights and Respondent was on notice of these rights.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent deceives users into believing they are or are associated with Complainant for malicious and fraudulent purposes. Respondent has no connection to Complainant and could not have registered the disputed domain name for any purpose other than to trade off of Complainant’s goodwill in the GOOGLE mark. Respondent registered the disputed domain name with false or misleading WHOIS information and a privacy service. Respondent knew of Complainant’s rights in the GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GOOGLE and uses it to market Internet search services around the world.
Complainant’s rights in its mark date back to at least 2004.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is used for phishing and/or another type of malicious scam.
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 disputed domain name incorporates Complainant’s GOOGLE mark in its entirety and merely adds the descriptive/generic term “central” and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms is 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name lists the registrant as “David Rose”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant presents clear and convincing evidence to the effect that the disputed domain name is used for phishing and/or another type of malicious scam. Phishing and fraud have consistently been held not to satisfy Policy ¶¶ 4(c)(i) or (iii). See, e.g., Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that the address given for the WHOIS is false. For the reasons given above in the discussion on multiple respondents, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and it will not further discuss the allegation.
Complainant also produces a screenshot of an archived WHOIS record which falsely identifies Complainant as the registrant, at that time, of the disputed domain name. The Panel finds that Complainant has not presented sufficient evidence to show that the current registrant is the same person/entity as the prior registrant, thus the Panel will not further discuss this matter.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. 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 name.
Indeed, as already noted, Respondent uses the disputed domain name in furtherance of a malicious scheme. Phishing, fraud, or other malicious activity have been used as independent evidence of bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA 1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Thus the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).
The Panel dismisses, without prejudice, the Complaint against the <google-updata.com>, <googleanalyticstag.com> domain names.
Having established all three elements required under the ICANN Policy for the domain name <centralgoogle.com>, the Panel concludes that relief shall be GRANTED for that domain name.
Accordingly, it is Ordered that the <centralgoogle.com> domain name be TRANSFERRED from Respondent to Complainant and that the <google-updata.com>, <googleanalyticstag.com> domain names REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: February 22, 2023
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