Google LLC v. Farid Shahidinejad
Claim Number: FA1907001853508
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Farid Shahidinejad (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gsuitecouponcodes.com>, registered with NameCheap, Inc..
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.
Paul M. DeCiccco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2019; the Forum received payment on July 23, 2019.
On July 24, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <gsuitecouponcodes.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@gsuitecouponcodes.com. Also on July 25, 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 August 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCiccco 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 contends as follows:
Complainant offers a wide range of Internet-related products and services and computer hardware.
Complainant has rights in the G SUITE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <gsuitecouponcodes.com> domain name is confusingly similar to Complainant’s G SUITE mark. Respondent incorporates the mark in its entirety and adds the non-distinctive wording “coupon codes” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <gsuitecouponcodes.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register or use the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to divert Internet users from Complainant and its services to Respondent’s own website for commercial gain. Additionally, Respondent is using the disputed domain name in connection with a phishing scheme to gather personal information about Internet users.
Respondent registered and uses the <gsuitecouponcodes.com> domain name in bad faith. Respondent domain name diverts internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s G SUITE mark. Respondent engages in phishing scheme in order to obtain personal information such as an email address. Respondent also had knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the G SUITE trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the G SUITE trademark.
Respondent uses the domain name to confuse internet users into believing Respondent is affiliated with Complainant and to facilitate a phishing scheme in order to fraudulently obtain personal information from third parties.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its G SUITE trademark. Such registration is sufficient to demonstrate Complainant’s rights in the G SUITE mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <gsuitecouponcodes.com> domain name contains Complainant’s G SUITE trademark, less its domain name impermissible space, followed by the suggestive term “coupon codes” and all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the G SUITE trademark for the purposes of Policy ¶ 4(a)(i). In fact, the domain name included the term “coupon codes” suggests a possible business area of Complainant thus only add to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <gsuitecouponcodes.com> domain name is confusingly similar to Complainant’s G SUITE trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for <gsuitecouponcodes.com> identifies the domain name’s registrant as “Farid Shahidinejad” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <gsuitecouponcodes.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <gsuitecouponcodes.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <gsuitecouponcodes.com> domain name to divert internet users from Complainant and its services to Respondent’s <gsuitecouponcodes.com> website. In furtherance of driving traffic to the sham website, Respondent relies on the at-issue domain name to create the false impression that Complainant is in some way associated with Respondent when it is not. Respondent’s use the of 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 pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the <gsuitecouponcodes.com> domain name to divert internet users from Complainant and its services to Respondent’s own website. Respondent further creates the false impression that Complainant is in some way associated with Respondent. Indeed, Respondent is intent on passing itself off as Complainant. Using a confusingly similar domain name in this manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) & (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).
Additionally, Respondent engages in a phishing scheme whereby third party visitors to Respondent’s <gsuitecouponcodes.com> website are tricked into giving up their email address and other personal information. Such use of the <gsuitecouponcodes.com> domain name independently indicates Respondent’s bad faith registration and use of the domain name. See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the G SUITE mark when it registered <gsuitecouponcodes.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s use of Complainant’s G SUITE trademark on Respondent’s <gsuitecouponcodes.com> website. Registering and using a domain name containing such a well-known trademark as Complainant’s G SUITE makes it inconceivable that Respondent was unaware of Complainant’s trademark when it registered the <gsuitecouponcodes.com> domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gsuitecouponcodes.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCiccco, Panelist
Dated: August 15, 2019
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