DECISION

 

Google LLC v. Muhammad Nadeem

Claim Number: FA2402002085486

PARTIES

Complainant is Google LLC ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Muhammad Nadeem ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bardadvanced.us> and <googlegemini.us>, registered with NameCheap, Inc..

 

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.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 26, 2024; Forum received payment on February 26, 2024.

 

On February 26, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <bardadvanced.us> and <googlegemini.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

 

On February 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2024, 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@bardadvanced.us, postmaster@googlegemini.us. Also on February 28, 2024, 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 20, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Google is a Delaware limited liability company headquartered in Mountain View, California. However, Google is a global company, with offices throughout North America, Europe, Latin America, Asia Pacific, Africa, and the Middle East.

 

Since 1998, the year the Google was created, the Google search engine has become one of the most highly recognized Internet search services in the world. Google's primary website is located at www.google.com. It owns and operates hundreds of additional GOOGLE-formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE mark.

 

The GOOGLE mark is famous, well-known, and subject to broad protection in the United States and internationally as a result of Google's worldwide use of the GOOGLE mark, extensive advertising and promotion of the services offered in connection with the mark, the substantial revenue generated under the GOOGLE mark, and the high degree of consumer recognition of the mark. The fame of the GOOGLE mark has been found by a number of previous panels under the UDRP.

 

On February 6, 2023, Google announced the launch of its conversational AI service under the mark BARD. There has been extensive unsolicited media coverage relating to the launch of BARD. On May 10, 2023, Google announced its AI next-generation foundation model under the name and trademark GEMINI. As with BARD, there has been extensive unsolicited media coverage relating to the launch of GEMINI.

 

On or around January 17, 2024, Complainant sent a letter to Respondent requesting that Respondent cease the use of the disputed domain names and cancel or transfer the registrations for those names to Complainant. Respondent replied on the same day, seeking clarifications about Complainant's requests but otherwise indicating it intended to take action to address Google's concerns. Complainant responded on January 18, 2024, to further clarify its requests concerning the disputed domain names and provide information to Respondent as to how to cancel or transfer the names to Complainant as requested. Respondent replied on the same day indicating they had made certain requested changes to the websites located at the disputed domain names (most of these changes did not actually take place) and asking to sell the disputed domain names to Complainant. Complainant responded on January 24, 2024, reiterating the need for specific changes to the websites at the disputed domain names and requesting proof of registration costs in order to discuss the possibility of reimbursement. Respondent failed to further respond, despite several additional follow-up communications from Complainant.

 

B. Respondent

Respondent is listed as the owner of both of the disputed domain names and registered those names on September 24, 2023 (<googlegemini.us>), and January 10, 2024 (<bardadvanced.us>). Respondent, however, failed to submit a formal Response in this proceeding.

 

FINDINGS

1.  Complainant owns the mark GOOGLE and has used that name since at least as early as 1999.  It has trademark registrations in the United States and numerous countries across the globe, each of which are valid and in full force and effect.  See Complaint at Exhibit H.

 

2.  Although the trademark applications for BARD and GEMINI are at various stages throughout the many countries globally, Complainant has acquired, at a minimum, common law rights to both the BARD and GEMINI marks.  On February 6, 2023, Google announced the launch of its conversational artificial intelligence ("AI") service under the name BARD. On May 10, 2023, Google then announced its AI "next-generation foundation model under the name GEMINI.

 

3.  The disputed domain names <googlegemini.us> and <bardadvanced.us>, registered by Respondent on September 24, 2023, and January 10, 2024, respectively, are identical or confusingly similar to the GOOGLE, GEMINI and BARD marks.

 

4. The Respondent has not demonstrated any recognized rights or legitimate interests in the disputed domain names.

 

5.  Complainant has established that the disputed domain names have been registered and used in bad faith.

 

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.  See, e.g., Celo Foundation v. Ioan Otis / IOANOTIS Ltds, FA2109001962369 (Forum Sept. 30, 2021) ("Given the similarity between the Uniform Domain Name Dispute Resolution Policy ('UDRP') and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.").

 

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

a)       <googlegemini.us>: Complainant, Google LLC, has been providing search services, search engine technology, and associated products and services since at least as early as 1999.  Previous panels under the UDRP have found the GOOGLE mark to be famous and well-known. See, e.g., Google LLC v. Rachel F Baily, FA 1933413 (Forum May 4, 2021) ("[T]he fame of the GOOGLE Mark, which was adopted by Complainant far in advance of the Respondent's registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently…. the GOOGLE Mark is widely known worldwide….").

 

Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Complainant provides evidence of a number of trademark registrations for the GOOGLE mark globally, including a certificate of registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,123,471, registered on April 10, 2012). See  Complaint. Ex. H.

 

Respondent's <googlegemini.us> domain name is identical or confusingly similar to Complainant's GOOGLE mark because it incorporates the entire GOOGLE mark and adds the name of a service provided by the Complainant.  Although it is not necessary to establish rights with respect to the service name attached to the GOOGLE mark (e.g., in this case, GEMINI), Complainant has submitted significant evidence that the Complainant has established common law rights in the mark GEMINI as well. This includes copies of marketing collateral, news articles, and internal descriptions of, and information about, the service.  

 

b)       Respondent's <bardadvanced.us> domain name is identical or confusingly similar to Complainant's BARD mark because it incorporates the entire BARD mark and simply adds the generic term "advanced."  Although the BARD mark is currently in the application phase at a number of global national trademark offices, the Panel believes that the Complainant has established common law rights in the mark. To establish common law trademark rights for purposes of the usDRP, "the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services."  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), Section 1.2. Complainant has provided uncontested evidence that it has used the BARD mark as the name of its AI conversational service since February 2023. Complainant has submitted extensive evidence of its use of the BARD mark as well as references to the mark in informational and marketing collateral by Complainant and third party news sources.  This Panel finds therefore that Complainant has acquired sufficient goodwill and reputation in the BARD mark in relation to artificial intelligence services to create protectable rights in the mark sufficient to satisfy the requirements for standing to bring a complaint pursuant to Policy ¶ 4(a)(i).

 

The addition of a generic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Offerpad, Inc. v. Phillip Hayes, FA 1909553 (Forum Sept. 30, 2020) (" Respondent's <offerpaddepot.com> domain name is identical or confusingly similar to Complainant's OFFERPAD mark because it incorporates the entire OFFERPAD mark and simply adds the generic term "depot." The addition of a generic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i)."); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).  Here, the addition of the term "advanced" is insufficient to differentiate it from the BARD mark for purposes of the Policy.

 

Rights or Legitimate Interests

In addition to demonstrating that the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Once that prima facie case is made, 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 names because Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use the Complainant's marks. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)). Additionally, lack of authorization or license to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

Complainant has successfully established a prima facie case that the Respondent does not have rights or legitimate interests in and to the disputed domain names. Respondent's WHOIS information does not make any mention of the domain names or the GOOGLE, BARD, or GEMINI marks as Respondent's name or nickname. See, e.g., Tencent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its marks).

 

In addition, the Panel agrees with the Complainant that there is no evidence that the Respondent has used or is using either of the domain names in connection with bona fide offerings of goods or services or a legitimate noncommercial or fair use.  At the time of the writing of this decision, the <bardadvanced.us> domain name does not resolve to any active website. The <googlegemini.us> domain name, however, directs users to a website containing written content and banner advertising. It advertises a product called "Cool Cash Stashgoogle Gemini" which supposedly is a "unified advertising platform that combines the power of search and display advertising. It allows advertisers to create and manage their campaigns across various Google properties, including the Google Search Network, YouTube, mobile apps, and websites."  The content, however, never describes how it supposedly works, nor does it provide any details on how to acquire the product. There are no links to purchase the "product" nor even any indication of where this product is sold. Moreover, a quick search of the image which corresponds to the product on the Respondent's website reveals that that same image has been used in connection with dozens, if not hundreds, of other unrelated products and services including drills and machine tools.  

 

Without any response from the Respondent, the only reasonable conclusion is that the content is more likely than not made up or even AI generated. Moreover, the fact that this likely made-up product references the Complainant's services is a clear indication that the Respondent is not using either of the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Registration or Use in Bad Faith

Under the usDRP, unlike the UDRP, a Complainant must establish that the Respondent either registered OR used the disputed domain name in bad faith. That said, the Panel believes that Complainant has indeed established both that the disputed domain names were registered AND are being used in bad faith.

 

Complainant argues that Respondent registered and uses the disputed domain names in bad faith based essentially on four grounds: (a) Respondent had actual and/or constructive knowledge of Complainant's rights in the Complainant's marks at the time Respondent registered and subsequently used the disputed domain names, (b) the disputed domain names are closely connected with a service offered by Complainant, (c) the Respondent is offering the domain names for sale, and (d) the Respondent has been on the losing side of a number of other prior UDRP cases.

 

Although constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Google LLC v. Kamskova S Evgenevna, FA1905001842393 (Forum June 6, 2019) ("Evidence that a mark is famous and extensively used can demonstrate that a respondent had actual knowledge of a complainant's rights in a mark at the time of registration of a disputed domain name.").  Complainant argues that the fame and uniqueness of the GOOGLE, GEMINI and BARD marks make it improbable that Respondent created either of the disputed domain names independently. This Panel agrees that Respondent has actual knowledge of Complainant's rights in the Complainant's marks.

 

Although the domain name <bardadvanced.com> currently redirects to a non-resolving domain name, there are instances where the passive holding of a domain name can support findings of registration and use in bad faith. Although this doctrine has often been applied too broadly, in this case it is clearly warranted under the factors illustrated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000). Although the Complainant's mark BARD is currently only in the application stage at many national trademark offices, the mark has already established a strong reputation and is widely known throughout the world. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of this domain name.  The contact information for the Respondent in the WHOIS record indicates that the Respondent is from Pakistan, but also uses a Nexus code of C11 meaning that it is also claiming that it is a "natural person who is a United States Citizen."  See https://www.about.us/documents/policies/usTLD_Nexus_Codes.pd. In order to register a .us domain name, a registrant must meet one of the Nexus categories set forth at https://www.about.us/documents/policies/usTLD_Nexus_Requirements_Policy.pdf. In this case the contact information is either false, or the Respondent has likely not met its selected Nexus category, which itself is a clear indication of bad faith. In addition, the previous UDRP history of this particular Respondent, and the registration of the other disputed domain name in this case, it is not possible to conceive of any plausible use of the domain name by this Respondent that would not be illegitimate.

 

For the reasons set forth above, the Panel also finds that the <googlegemini.us> domain name was registered and is being used in bad faith. The <googlegemini.us> domain name directs users to a website which has content and banner advertising. However, the content is more likely than not made up or even AI generated. A quick search engine search of the image reveals dozens if not hundreds of copies of the very same image used by the Respondent for the "Cool Cash Stashgoogle Gemini" on other websites for unrelated products including drills and machine tools.

 

Not only does the domain name contain the famous GOOGLE mark, but it also uses the mark GEMINI, which although is not a registered trademark, is fairly well known and has established at a minimum common law rights. This is only exacerbated by having content that consistently references the Complainant's services creating the impression that the Respondent is attempting to deceive users into believing that it is either affiliated with or endorsed by the Complainant.

 

In addition, Respondent, in response to a cease-and-desist letter, stated it would transfer the disputed domain names for an undisclosed price. When given an opportunity by Complainant to demonstrate its costs in the acquisition of those domain names, the Respondent failed to submit a response. Offering to sell domain names is not in and of itself a violation of the Policy. In fact, "a business registering and selling domain names has been recognized by prior UDRP panels as capable of establishing rights or legitimate interests under the Policy, provided the domain name was not registered to profit from and exploit a complainant's trademark." JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / DOT CORNER WEB SERVICES, FA 2046327 (Forum June 22, 2023 (citing Limble Solutions, Inc. v. Domain Admin, Alter.com, Inc., D2022-4900 (WIPO March 8, 2023). Here there is no evidence that Respondent has a business of buying and selling domain names. However, there is evidence that the domain name was registered to exploit a complainant's trademark in violation of the Policy.

 

Finally, Respondent appears to be developing a pattern of "cybersquatting" in that it has lost prior UDRP cases. See Charter Communications Holding Company, LLC v. Muhammad Nadeem, FA 2049261 (Forum July 19, 2023); and Charter Communications Holding Company, LLC v. Muhammad Nadeem, FA 2045147 (Forum June 19, 2023). Previous UDRP and Policy decisions can be used to show a pattern of bad faith registration under Policy ¶ 4(b)(ii). See, e.g., Azar Int'l Inc. v. Texas Int'l Prop. Assocs., FA 1122600 (Forum February 18, 2008)(determining that the respondent's forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)); The Barack Obama Foundation v. michael board, FA2107001955559 (Forum August 18, 2021) ("Complainant further argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), registration of multiple disputed domain names in a single proceeding, as well as ownership of other domain names which appear to violate the Policy, may demonstrate a pattern of bad faith registration and use… From this evidence, the Panel agrees that Respondent has registered the disputed domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name and that it has engaged in a pattern of such conduct under Policy ¶ 4(b)(ii)."). Though the loss of one or two previous disputes may not establish a pattern of cybersquatting, given the totality of circumstances in this case only, the Panel also finds that Respondent's registration of multiple names here that match a third party's trademarks, coupled with its previous cases, does begin to establish a pattern of behavior that can be considered evidence of bad faith under Policy ¶ 4(b)(ii).

 

DECISION

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

 

Accordingly, it is Ordered that the <bardadvanced.us> and <googlegemini.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: April 3, 2024