Google LLC v. Irfan Pathan / Webstream Technologies
Claim Number: FA1908001855458
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Irfan Pathan / Webstream Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gsuitegoogleapps.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2019; the Forum received payment on August 1, 2019.
On August 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gsuitegoogleapps.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 August 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@gsuitegoogleapps.com. Also on August 5, 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 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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, services and computer hardware including computing tools and services, cloud storage and file sharing services, email services, etc.
Complainant has rights in the GOOGLE and G SUITE marks through its trademark registrations all over the world, including the with the United States Patent and Trademark Office (“USPTO”), as well as the European Union Intellectual Property Office (“EUIPO”).
Respondent’s <gsuitegoogleapps.com> domain name is confusingly similar to Complainant’s GOOGLE and G SUITE marks as it combines both marks in their entirety along with the non-distinctive term “apps” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <gsuitegoogleapps.com> domain name. Respondent is not authorized or permitted to use Complainant’s GOOGLE or G SUITE mark nor commonly known by the disputed domain name. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to mimic Complainant’s official website and purports to offer coupon codes for Complainant’s products and services.
Respondent registered and uses the <gsuitegoogleapps.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name by passing off as Complainant. Furthermore, Respondent’s attempt to take advantage of Complainant’s referral program violates Complainant’s relevant Terms and Conditions Policy. Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE and G SUITE marks prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the G GOOGLE and G SUITE trademarks through its registration of such marks with the USPTO and/or EUIPO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GOOGLE and G SUITE trademarks.
Respondent uses the domain name to address a website adorned with Complainant’s proprietary intellectual property that mimics Complainant’s official website and purports to offer coupon codes for Complainant’s G SUITE products and services.
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 USPTO and EUIPO registrations for its GOOGLE and G SUITE trademarks. Registration with either registrars is sufficient to demonstrate Complainant’s rights in a marks under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.).
Respondent’s <gsuitegoogleapps.com> domain name contains Complainant’s G SUITE and GOOGLE trademarks, less G SUITE’s domain name impermissible space, followed by the suggestive term “apps” and all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademarks are insufficient to distinguish the domain name from the trademarks for the purposes of Policy ¶ 4(a)(i). In fact, the domain name included term “apps” suggests software applications, a business area related to Complainant, and thus only add to any confusion between the domain name and Complainant’s trademarks. Therefore, the Panel concludes that Respondent’s <gsuitegoogleapps.com> domain name is confusingly similar to both Complainant’s GOOGLE and its G SUITE trademarks. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also 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 <gsuitegoogleapps.com> identifies the domain name’s registrant as “Irfan Pathan” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <gsuitegoogleapps.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <gsuitegoogleapps.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 <gsuitegoogleapps.com> domain name to create the appearance that the <gsuitegoogleapps.com> domain name and website are in some way affiliated with Complainant, when they are not, such that internet users will be diverted to the <gsuitegoogleapps.com> website. 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, Google Inc. v. Mahmut Karaca / Karaca Grup Ltd. Sti., FA 1682647 (Forum Jul. 25, 2016) (“Respondent’s use of the confusingly similar domain name to divert Internet users to its own website is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.”); see also, 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, 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 <gsuitegoogleapps.com> domain name to create the false impression that Complainant is in some way associated with Respondent’s <gsuitegoogleapps.com> domain name and website. Respondent is clearly 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Additionally, Respondent’s use of the confusingly similar domain name for commercial gain to take advantage of Complainant’s G SUITE referral program violates the program’s Terms and Conditions. Respondent’s transgression further supports a finding of bad faith. See Google Inc. v. Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of 10youtube.com in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service constituted bad faith use and registration under the Policy); see also Google Inc. v Miller, FA1067791 (Forum Oct. 24, 2007) (finding use of youtubex.com in association with a website that enabled download of video clips from Google’s YouTube website in violation of Google’s YouTube Terms of Service constituted bad faith use and registration).
Finally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE and G SUITE marks when it registered <gsuitegoogleapps.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s attempt to capitalize upon Complainant’s referral program, as well as from Respondent’s use of Complainant’s trademarks and other intellectual property on Respondent’s <gsuitegoogleapps.com> website. Registering and using a domain name containing such well-known trademarks as Complainant’s GOOGLE and G SUITE marks alone without even considering further evidence makes it inconceivable that Respondent was unaware of Complainant’s trademark when it registered the <gsuitegoogleapps.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 <gsuitegoogleapps.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 28, 2019
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