Google LLC v. vijay kumar / ADV Software
Claim Number: FA1903001835628
Complainant is Google LLC (“Complainant”), represented by Brian J Focarino of Cooley LLP, Washington DC, USA. Respondent is vijay kumar / ADV Software (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmail-customerservice.com>, registered with GoDaddy.com, LLC; and <contactgmail.com> and <gmail-customerservices.com> (collectively “Domain Names”), registered with Wild West Domains, 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 the Forum electronically on March 25, 2019; the Forum received payment on March 25, 2019.
On March 26, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <contactgmail.com> and <gmail-customerservices.com> domain names are registered with Wild West Domains, LLC and that Respondent ADV Software is the current registrant of the names. On April 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmail-customerservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent vijay kumar is the current registrant of that name. GoDaddy.com, LLC and Wild West Domains, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Wild West Domains, LLC registration agreements and have 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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@contactgmail.com, postmaster@gmail-customerservices.com, and postmaster@gmail-customerservice.com. Also on April 3, 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 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the named entities which control the domain names at issue (in the case of <contactgmail.com> and <gmail-customerservices.com> ADV Software and in the case of <gmail-customerservice.com> vijay kumar ) are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s GMAIL mark, 2) the named respondents are located on the same street in Kolkata, India, and 3) each of the websites to which the Domain Names resolve (“Respondent’s Websites”) feature virtually identical services, stock images and descriptions. The Respondent’s Websites include identical language and identical grammar errors and the websites for <gmail-customerservice.com> (registered to vijay kumar) and <contactgmail.com> (registered to ADV Software) feature identical contact numbers. This evidence and particularly Point 3 above, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that the Domain Names would resolve to websites that offer identical services with identical contact details.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for the remainder of the Decision.
A. Complainant
Since 2004, Complainant has used the GMAIL mark in connection with the provision of email and electronic messaging services. Since that time, the GMAIL service has become one of the premier free, web-based email services in the world. Complainant has rights in the GMAIL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,150,462, registered Oct. 3, 2006). Respondent’s Domain Names are confusingly similar to Complainant’s GMAIL mark as they each incorporate the entire mark while adding generic terms (“contact,” “customer service,” or “customer services”).
Respondent has no rights or legitimate interests in the <contactgmail.com>, <gmail-customerservices.com>, and <gmail-customerservice.com> domain names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant to offer directly competing services.
Respondent registered and uses the <contactgmail.com>, <gmail-customerservices.com>, and <gmail-customerservice.com> domain names in bad faith as Respondent registered multiple domain names incorporating the famous and distinctive GMAIL mark. Additionally, to the extent the services at the Domain Names are legitimate, Respondent uses the Domain Names to confuse users and offer directly competing services. Further, Respondent appears to use the Domain Names as part of a fraudulent phishing scheme to collect Internet users’ confidential passwords. Moreover, Respondent had actual and constructive knowledge of Complainant’s rights in the GMAIL mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GMAIL mark. Each of the Domain Names is confusingly similar to Complainant’s GMAIL mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 has rights in the GMAIL mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the GMAIL mark as they each incorporate the entire mark while adding generic terms (“contact,” “customer service,” or “customer services”), the “.com” generic top-level domain (“gTLD”) and in the case of two of the Domain Names, a hyphen. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See 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); Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Names 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 Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GMAIL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. 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 “vijay kumar / ADV Software” as the registrants 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 Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names have resolved to websites advertising technical support services under the GMAIL Mark, in direct competition with Complainant and without any attempt to disclaim or otherwise make clear the absence of any association or connection with Complainant. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”);
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between February and September, 2018, Respondent had actual knowledge of Complainant’s GMAIL mark. Each of the Domain Names has resolved to a website offering services under the GMAIL Mark relating to Complainant’s Gmail products in direct competition with Complainant. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s GMAIL Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites purporting to sell competing services under the GMAIL Mark. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
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 <contactgmail.com>, <gmail-customerservices.com>, and <gmail-customerservice.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 28, 2019
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