Google LLC v. Kamskova S Evgenevna
Claim Number: FA1905001842393
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Michigan, United States. Respondent is Kamskova S Evgenevna (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-anaiytic.com>, registered with Realtime Register B.V..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 10, 2019, Realtime Register B.V. confirmed by e-mail to the Forum that the <google-anaiytic.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 May 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@google-anaiytic.com. Also on May 14, 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 June 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant was created in 1997 and has become one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant has rights in the trademark GOOGLE through its global use in commerce as well as its registration with the United States Patent and Trademark Office (“USPTO”) and many other national trademark offices in various countries. In November 2005, Complainant launched its “Google Analytics” online service which allows users to track and report website traffic and to assess marketing strategies and results. In connection with this service, Complainant uses the domain name <analytics.google.com>. Respondent’s <google-anaiytic.com> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent has entirely incorporated the GOOGLE mark and merely added a hyphen, the word “ANAIYTIC” (a mis-spelling of the word “analytic”), and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <google-anaiytic.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent is not licensed or authorized to use Complainant’s mark. Additionally, Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to give the impression of affiliation or association with Complainant in order to divert internet users from Complainant and its services to Respondent’s own website or to third-party websites that are unrelated to Complainant. Additionally, Respondent uses the domain name in connection with the distribution of malware. Lastly, Respondent is engaged in typosquatting which is not a use indicative of rights or legitimate interest in a domain name.
Respondent registered and is using the disputed domain name in bad faith by attempting to attract internet users to Respondent’s online location or to third-party websites that are unrelated to Complainant. Respondent also uses the domain name to distribute malware. Lastly, Respondent was well-aware of Complainant’s rights in the GOOGLE mark due to Complainant’s extensive, global use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 claims to have rights in the GOOGLE mark through its registrations with the USPTO and other trademark offices around the world. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of some of its USPTO registrations for the GOOGLE mark. Therefore, the Panel finds that Complainant has rights in the GOOGLE mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <google-anaiytic.com> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent has entirely incorporated the GOOGLE mark and merely added a hyphen, the word “ANAIYTIC” (as a mis-spelling of the word “analytic”), and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds that Respondent’s <google-anaiytic.com> is confusingly similar to Complainant’s GOOGLE mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then 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 asserts that Respondent has no rights or legitimate interests in the <google-anaiytic.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized or licensed to use Complainant’s GOOGLE mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information for the disputed domain name identifies Respondent as “Kamskova S. Evgenevna” and there is no Response or any submission from the Respondent, nor anything else in the record to suggest that Respondent is known otherwise or that it is authorized to use the GOOGLE mark. Thus, the Panel finds that Respondent is not commonly known by the <google-anaiytic.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent uses the domain name to divert internet users away from Complainant and its services and to Respondent’s own webpages or to third-party page that are unrelated to Complainant. Panels have held in the past that using a domain name to divert internet users to its own website is not a bona fide offering of goods or service or for a legitimate noncommercial or fair use of the domain name. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, although Complainant does not provide any screenshots or additional evidence pertaining to the current webpage that resolves from the disputed domain name, it does submit screenshots from the Archive.org (Wayback Machine) website indicating that the disputed domain name did, at various times during 2018 and 2019, redirect to a third-party website that serves as a JavaScript library. Therefore, the Panel finds that Respondent’s use of the domain name to divert internet users away from Complainant is not a bona fide offering of goods or services or for a legitimate noncommercial or fair us of the domain name per Policy ¶ 4(c)(i) and (iii).
Complainant next contends that Respondent uses the domain name in connection with the distribution of malware. Panels have held previously that the use of a domain name to distribute malware is not a bona fide offering of goods or services or a fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct, 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name); see also Charter Communications Holding Company, LLC v. FAG / yiming liu, FA 1840952 (Forum May 16, 2019) (finding that respondent did not make a bona fide use where “the evidence is that the 25omain name resolves to a website which is being used to install malware onto users’ computers.”) Here, Complainant has provided the panel with screenshots from multiple virus scanning programs which indicate that the <google-anaiytic.com> webpage is risky and malicious. In one document “it is reported that the <google-anaiytic.com> Domain Name was used in connection with a MageCart data breach scheme in which attackers ‘add[ed] malicious JavaScript [that mimics Google Analytics script] to a site that captures payment and account information when it is entered into a form or submitted.’” Therefore, the Panel finds that Respondent’s use of the disputed domain name to distribute malware is not a bona fide offering of goods or services or a fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant argues that Respondent is engaged in typosquatting by using the <google-anaiytic.com> domain name which takes advantage of common typing errors. Panels have previously held that acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, Respondent uses Complainant’s GOOGLE mark in its entirety and adds the misspelling of the word “analytic” in hopes of taking advantage of typographical errors. Complainant points out that “an ‘i’ has a similar appearance to the letter ‘l’” and that “’i’ is adjacent to ‘l’ on a standard American keyboard”. The Panel agrees and finds that Respondent has engaged in typosquatting and that this is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the GOOGLE mark at the time Respondent registered and subsequently used the <google-anaiytic.com> domain name and that this indicates bad faith registration and use. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). 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. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant contends that its extensive and global use, as well as the fame of the GOOGLE mark indicates that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant provides examples of awards and website rankings for its business in support of this contention. The Panel agrees and finds that Respondent had actual notice of Complainant’s rights in the GOOGLE mark per Policy ¶ 4(a)(iii) based upon the fame and ubiquity of the mark.
Complainant further argues that Respondent registered and uses the <google-anaiytic.com> domain name in bad faith by attempting to attract internet users to Respondent’s online location or third-party websites by creating a likelihood of confusion that a relationship existed between Complainant and Respondent. Panels have consistently held that attracting internet users for commercial gain by creating a likelihood of confusion is evidence of bad faith registration per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). As noted above, Complainant provides the Panel with evidence that the disputed domain name resolved to a third-party Java Script library website. Therefore, the Panel finds that Respondent’s registration and use of the confusingly similar <google-anaiytic.com> domain name to direct users away from Complainant and towards a third-party website was done in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further contends that Respondent uses the disputed domain name to distribute malware. Panels have held that using a disputed domain name to install malware on Internet users’ devices is evidence of bad faith per Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undeniable use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The Panel notes that Complainant has submitted into evidence screenshots from multiple virus scanning programs that indicate that the <google-anaiytic.com> webpage is, in fact, risky and malicious. Therefore the Panel finds that Respondent’s use of the <google-anaiytic.com> domain name to distribute malware is evidence of bad faith registration and use per 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 <google-anaiytic.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 6 2019
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