Google LLC v. sai prasath
Claim Number: FA1903001835037
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Michigan, USA. Respondent is sai prasath (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duoforpcdownloads.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2019; the Forum received payment on March 20, 2019.
On March 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <duoforpcdownloads.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 March 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2019 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@duoforpcdownloads.com. Also on March 21, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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
1. Complainant offers a wide range of Internet-related products and services, including Internet search and online advertising services. Complainant has used the DUO mark since the release of its video chat software application in August 2016, and its trademark registration application is pending with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 87216080, filed Oct. 26, 2016).
2. Complainant also has rights in the GOOGLE DUO mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,367,619, registered Jan. 2, 2018). Respondent’s <duoforpcdownloads.com>[i] domain name is confusingly similar to Complainant’s DUO and GOOGLE DUO marks as it incorporates the dominant portion of the marks in its entirety along with the descriptive term “for PC downloads” and a “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <duoforpcdownloads.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s DUO mark and is not commonly known by the domain name.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant and to purport to offer competing services. Further, Respondent offers software downloads to users seeking Complainant, and, upon information and belief, the software downloads contain malware.
5. Respondent registered and uses the <duoforpcdownloads.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users by passing off as Complainant to offer competing software products and services. Further, the software products offered by Respondent through use of the domain name is likely malware.
6. Additionally, Respondent had actual knowledge of Complainant’s rights in the DUO and GOOGLE DUO marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the DUO mark. Respondent’s domain name is confusingly similar to Complainant’s DUO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <duoforpcdownloads.com> domain name and that Respondent registered and uses 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 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 holds common law rights in the DUO mark and does not currently hold a trademark registration for that mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant contends that from its inception, Complainant’s DUO product and service has garnered significant media attention and coverage, and has attracted millions of users, with an estimate of one billion downloads. Based on the record, the Panel holds that Complainant does hold common law rights in the DUO mark for the purposes of Policy ¶ 4(a)(i).
Further, Complainant argues Respondent’s <duoforpcdownloads.com> domain name is confusingly similar to Complainant’s DUO mark as it incorporates the dominant portion of the mark in its entirety along with the descriptive term “for PC downloads” and a “.com” gTLD. Such changes are not sufficient to distinguish the domain name from DUO mark. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). The Panel holds that the <duoforpcdownloads.com> domain name is confusingly similar to the DUO mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <duoforpcdownloads.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <duoforpcdownloads.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the DUO mark in any manner. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (WHOIS information used to identify the respondent as different than the domain name at issue). The WHOIS information of record identifies the registrant of the at-issue domain name as “sai prasath,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <duoforpcdownloads.com> domain name.
Further, Complainant contends Respondent uses the <duoforpcdownloads.com> domain name to pass off as Complainant and to offer competing services. Use of a domain name incorporating the mark of another to pass off as a complainant to offer competing services demonstrates a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the <duoforpcdownloads.com> domain name’s resolving webpages, which purports to provide information and software updates for Complainant’s DUO software product and service, prominently displays the DUO mark at the top of the webpages, and makes use of various logos owned by Complainant. The Panel agrees that Respondent fails to use the <duoforpcdownloads.com> domain name for a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent offers software downloads to users seeking Complainant, and, upon information and belief, the software downloads contain malware. Such use indicates a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See 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).”). Complainant alleges, without contradiction in the record, that the downloads offered by Respondent on the resolving webpage are actually illegitimate malware and not connected with Complainant’s DUO products and services. Accordingly, the Panel finds that Respondent’s use of the <duoforpcdownloads.com> domain name to distribute malware does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use under this Policy.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent’s bad faith is demonstrated by its attempt to attract, for commercial gain, users to the <duoforpcdownloads.com> domain name by passing off as Complainant to offer competing software products and services. Use of a domain name incorporating the mark of another to pass off as a complainant for commercial benefit demonstrates bad faith under Policy ¶¶ 4(b)(III) and/or (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). Complainant has provided screenshots of the domain name’s resolving webpages, which provides information and software updates for Complainant’s DUO software product and service, prominently displays the DUO mark at the top of the associated webpages and makes use of various logos owned by Complainant. The Panel holds that Respondent’s use of the <duoforpcdownloads.com> domain name demonstrates bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant contends that in light of the fame and notoriety of Complainant's DUO mark, it is inconceivable that Respondent could have registered the <duoforpcdownloads.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can provide adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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.”).
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 <duoforpcdownloads.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 19, 2019
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