DECISION

 

Google LLC v. Adriano Cotella / Nomix Professional di Adriano Cotella

Claim Number: FA2312002073874

 

PARTIES

Complainant is Google LLC ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Adriano Cotella / Nomix Professional di Adriano Cotella ("Respondent"), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sexygoogle.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 5, 2023; Forum received payment on December 5, 2023.

 

On December 6, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <sexygoogle.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 December 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@sexygoogle.com. Also on December 7, 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 December 28, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that the GOOGLE name was 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 and widely used Internet search services in the world. The GOGGLE Mark was found to be one of the top five Best Global Brands throughout the last several years. In 2020, Forbes ranked GOOGLE the second most-valuable brand globally. Complainant has rights in the GOOGLE mark through its registration in the United States in 2004. The mark is registered elsewhere around the world, including in Italy. The mark is famous.

 

Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE mark as it contains the mark in its entirety and merely adds the generic term "sexy", together with the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

Complainant states that Respondent (or a predecessor in interest) originally registered the disputed domain name on or around November 20, 2014 -- many years after Complainant established rights in its famous GOOGLE mark. Based on historical WHOISs records, the registration data associated with the disputed domain name changed to its current form on or around October 12, 2021, indicating that Respondent may have acquired the disputed domain name on or around that date from a previous registrant. In either case, the disputed domain name was registered or acquired by Respondent long after Complainant established rights in its famous GOOGLE mark.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its mark. Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial fair use. Instead, the resolving website mimics the Complainant's Internet search engine and incorporates adult content, which Respondent monetizes through an embedded advertising service. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith as the resolving website offers a search service for adult content and displays advertising links. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant's rights in its mark date back to at least 2004.

 

The disputed domain name was registered in 2014.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent is using the disputed domain name to resolve to a website that displays adult-oriented material and advertising links for such material. The resolving website displays a disclaimer that references Complainant and its mark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's GOOGLE mark in its entirety and merely adds the generic/descriptive term "sexy" and the ".com" generic top-level domain ("gTLD"). The addition of a gTLD and a generic/descriptive term fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See 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 per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as "Adriano Cotella / Nomix Professional di Adriano Cotella". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

The disputed domain name resolves to a page displaying adult-oriented material. Where the Respondent uses a confusingly similar domain name to display adult-oriented material, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See National Spiritual Assembly of the Bahá'ís of the United States v. Moniker Privacy Services, FA 1644005 (Forum Dec. 1, 2015) (finding that the disputed domain's resolving website contained adult-related content, including links to commercial pornographic websites, online, dating, and news related to porn actors and the porn industry, and therefore Respondent failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Forum Sept. 27, 2002) (finding that the respondent's use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Vivendi Universal Games v. Chang, FA 206328 (Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to pornographic material and links, while presumably earning a commission or referral fees from advertisers). Therefore 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).

 

In addition, the resolving website displays advertising hyperlinks to third-party websites not related to Complainant's business. Where the Respondent uses a domain to redirect users to third-party services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).Therefore, on this ground also, 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).

 

Finally, according to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): "where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith". Further, paragraph 2.15 of the WIPO Overview states: "to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights." For the reasons given below, the Panel finds that Respondent's use of the disputed domain name is abusive of Complainant's trademark rights; the Panel also finds bad faith registration and use. Consequently, the mere existence of the disclaimer does not establish that Respondent has rights or legitimate interests in the disputed domain name.

 

For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

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, the resolving website displays adult-oriented material. Use of a disputed domain name to display adult-oriented material may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA 1534740 (Forum Jan. 31, 2014) ("Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant's HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content."); see also Brown & Bigelow, Inc. v Site Ads Inc., FA 96127 (Forum Jan. 11, 2001) (finding that the "[r]espondent has tarnished the Complainants mark by associating its mark with pornographic web site links, which also substantiates bad faith"); see also Youtv, Inc. v. Mr. Erkan Alemdar, FA 94243 (Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his web site for commercial gain and linked his web site to pornographic web sites). Thus the Panel finds Respondent's registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Further, also as already noted, the resolving website contains advertising links to third party websites unrelated to Complainant's business. Use of a domain name to resolve to a page of third-party links can demonstrate a respondent's bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant's business, through which the respondent presumably commercially gained). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iv).

 

Finally, the resolving website displays includes a disclaimer stating "Sexy google is neither affiliated nor endorsed by Google". This indicates that Respondent was aware of Complainant's mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sexygoogle.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: December 28, 2023