Google LLC v. Shayan Azam
Claim Number: FA2303002036971
Complainant is Google LLC (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, Washington D.C., USA. Respondent is Shayan Azam (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlepublishers.com>, registered with NameCheap, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on March 22, 2023; Forum received payment on March 22, 2023.
On March 23, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <googlepublishers.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@googlepublishers.com. Also on March 23, 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 April 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Google LLC is
in the search engine business. Complainant has 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). The disputed
domain name is confusingly similar to Complainant’s GOOGLE mark because
it incorporates the mark in its entirety and adds the descriptive term
“publishers” and the generic top-level domain name (“gTLD”) “.com”.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name is being used to divert traffic from Complainant’s Google news site and/or Google for publishers’ resources to Respondent’s own website offering aggregated news content.
iii) Respondent registered and uses the disputed domain name in bad faith.
Respondent’s willful intent to
violate Google’s intellectual property rights is exhibited by Respondent’s
registration and use of a domain name that fully incorporates the GOOGLE mark
being used in connection with a website intended to mimic an official Google
news or similar news aggregation or publisher support site or otherwise
leverage consumer confusion to draw Internet traffic to Respondent’s site for
commercial gain. Respondent offered the disputed domain name for sale. Respondent
had actual or constructive knowledge of Complainant’s rights in the GOOGLE
mark. Respondent engages in opportunistic bad faith.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on October 27, 2021.
2. Complainant has established 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).
3. The disputed domain name resolves to a website, which mimics Complainant’s Google news site and/or Google for publishers’ resources and offers aggregated news content.
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). Since 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 name is confusingly similar to Complainant’s GOOGLE mark because it incorporates the mark in its entirety and adds the descriptive term “publishers” and the gTLD “.com”. Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See 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).”). The Panel notes that the term “publishers” is related to Complainant’s business and is the type of term users would expect to see in connection with news aggregation, publisher support, or similar services from Google. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name 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 Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). 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 SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The unmasked WHOIS information for the disputed domain name lists the registrant as “Shayan Azam.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name 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. The disputed domain name is being used to divert traffic from Complainant’s Google news site and/or Google for publishers’ resources to Respondent’s own website offering aggregated news content. A respondent’s use of a confusingly similar domain name to offer services which compete with the complainant’s business 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 its website and the disputed domain name’s resolving webpage, showing similar news articles and clickable hyperlinks. Therefore, the Panel finds that Respondent does not use the disputed domain name for 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s willful intent to violate Google’s intellectual property rights is exhibited by Respondent’s registration and use of a domain name that fully incorporates the GOOGLE mark being used in connection with a website intended to mimic an official Google news or similar news aggregation or publisher support site or otherwise leverage consumer confusion to draw Internet traffic to Respondent’s site for commercial gain. The Panel observes that use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant has provided the Panel with screenshots of the disputed domain names’ resolving webpage named “Google Publishers.” The copyright notice on the website reserves all rights for “Google Publishers.” Additionally, there are many advertising banners throughout the website, demonstrating that Respondent is generating revenue from the site. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv). The Panel further infers, due to the fame and distinctive qualities of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the GOOGLE mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith 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 <googlepublishers.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 20, 2023
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