Google LLC v. Shawn Zarek Williams / WEBDOMAIN.VEGAS
Claim Number: FA2304002041865
Complainant is Google LLC (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, Washington D.C., USA. Respondent is Shawn Zarek Williams / WEBDOMAIN.VEGAS (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vipgoogleclub.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 26, 2023; Forum received payment on April 26, 2023.
On April 27, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <vipgoogleclub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@vipgoogleclub.com. Also on April 28, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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
Complainant, amongst other services, operates the Google search engine which has become one of the most highly recognized Internet search services in the world. As part of its Google search engine services Complainant offers advertising opportunities and provides assistance to companies seeking to advertise with it. Complainant asserts rights in the GOOGLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,884,502, registered September 14, 2004). The <vipgoogleclub.com> domain name is identical or confusingly similar to Complainant’s mark because the Domain Name incorporates the GOOGLE mark in its entirety, merely adding the descriptive terms “VIP” and “club” as well as the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <vipgoogleclub.com> domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is diverting Internet users to an infringing website (“Respondent’s Website”) and claiming it is a “sponsor” on another infringing website, which misleadingly asserts that Respondent is affiliated with Complainant.
Respondent registered and uses the <vipgoogleclub.com> domain name in bad faith. Respondent is creating a false affiliation with Complainant, and also claims it is a Google “sponsor”, to divert users to the Respondent’s Website. Respondent acted in opportunistic bad faith. Respondent failed to reply to a cease-and-desist letter. Respondent is a serial cybersquatter. Additionally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the GOOGLE mark given the content of the Respondent’s Website.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On April 29, 2023 Respondent sent an e-mail to Forum, the relevant material from this e-mail being set out below. The Panel notes that Respondent fails to annex any material to this e-mail supporting any of the claims made, (such as the claim that Respondent is a Google Partner representative).
“Thanks for bringing this to are attention as many do, But since GODADDY is the subholder and web developer on the website indicated as www.VIPGOOGLECLUB.com this website is not the property of Shawn Z. Williams. I only own the domain and started a business with Google in Henderson where we all do business as a Google Partner Representative.
Not only have I been financially compensated for companies like yours wasting my time with these fraudulent claims that I must have the FTC reward me for companies like yours to seize, transfer, amend agreements with GODADDY INC. www.CLUBCAR.VEGAS (Example). and to Assume the financial responsibility by putting your business license and legal fraudulent background checks in public hands and post media and media streams to see.
If you proceed with your decision, we have no choice but to submit a claim and get $330,000 dollars for compensation. So go ahead. MAKE US MORE MONEY!!!
Or SEE YOU IN COURT!!
Your choice!!! “
Complainant holds trademark rights for the GOOGLE mark. The Domain Name is confusingly similar to Complainant’s GOOGLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used of the Domain Name in bad faith.
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 formal 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 has rights in the GOOGLE mark based upon its registration with the USPTO (e.g., Reg. No. 2,884,502, registered September 14, 2004). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The Panel finds that the <vipgoogleclub.com> domain name is confusingly similar to the GOOGLE mark as it fully incorporates the GOOGLE mark and adds the generic or descriptive terms “VIP” and “club” and the “.com” gTLD. The addition of generic terms along with a gTLD to a wholly incorporated trademark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the GOOGLE mark. The Panel finds on the balance of probabilities that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent’s assertion that it is a Google Partner Representative is not supported by any documentation. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also 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). The WHOIS lists “Shawn Zarek Williams / WEBDOMAIN.VEGAS” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive but prior to the commencement of the proceeding resolved to the Respondent’s Website, which reproduces the Complainant’s GOOGLE mark. The Respondent’s Website is a commercial website promoting Respondent’s marketing services and makes a number of statements asserting that it is associated with the Complainant and its founders such as “with Founders of GOOGLE Larry Page and Sergey Brin; we know that Large Capitol Businesses depend on us” and “we assist for all marketing and social marketing users to buy brands and services through our VIP GOOGLE CLUB PORTALS & GOOGLE LEAD SERVICES…”. The Respondent’s Website does contain a small disclaimer at the footer of the page, but the Panel finds this disclaimer manifestly insufficient to confer rights and legitimate interests on the Respondent or disturb the overall impression that the Respondent’s Website is authorized by or connected with Complainant. Given that Respondent’s Website impersonates Complainant by use of Complainant’s GOOGLE mark, Respondent’s use of the Domain Name is neither fair use nor a bona fide offering of goods and services under the Domain Name. The use of a domain name to divert users, for commercial gain, to a third-party website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, December 23, 2016, Respondent had actual knowledge of the Complainant and its GOOGLE mark given the significant reputation of the GOOGLE mark and the fact that the Respondent’s Website offers services connected to the Complainant and refers to the Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register the Domain Name other than to take advantage of Complainant’s reputation in the GOOGLE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Name in bad faith to create a likelihood of confusion with Complainant’s GOOGLE mark in order to attract Internet users for commercial gain. In the absence of any alternative reasonable explanation and on the balance of probability, the Panel considers that the most likely explanation for Respondent’s actions is that the Domain Name was registered as part of a scheme to trade off the goodwill of Complainant’s GOOGLE mark for Respondent’s commercial gain. More specifically Respondent seeks to divert users aware of Complainant’s GOOGLE advertising services to the Respondent enabling it to promote its marketing services. This conclusion is supported by Respondent’s use of Complainant’s mark on its website and references to Complainant and its founders. Use of a confusingly similar domain name for commercial purposes not directly competitive with a complainant’s business can indicate bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”)
The Panel finds Complainant has satisfied 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 <vipgoogleclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 23, 2023
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