Google LLC v. Tim Black / PPL LLC.
Claim Number: FA2002001882117
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, United States. Respondent is Tim Black / PPL LLC. (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-global.com>, registered with Name.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2020; the Forum received payment on February 5, 2020.
On February 6, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <google-global.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2020 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-global.com. Also on February 6, 2020, 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 February 27, 2020, 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, Google LLC, is multinational technology company based in the United States. Complainant has rights in the GOOGLE mark through its use in commerce since 1997 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and many other trademark authorities around the world dating back to 1999. Respondent’s <google-global.com> domain name, registered on January 19, 2016, is confusingly similar to Complainant’s GOOGLE mark as it incorporates the mark in its entirety, merely adding the generic term “global” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <google-global.com> domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed 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 redirect users to a website that displays a message “This site can’t be reached” but which also contains malware according to a report generated by a virus checking service.
Respondent registered and uses the <google-global.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Additionally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registering the disputed domain name due to the global fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 rights in the GOOGLE mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO may be sufficient to establish rights in that mark. 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). Complainant provides a list of its trademark registrations for the GOOGLE mark with the USPTO and other government authorities but the list is merely a table that appears to have been produced by Complainant’s Representative and no images of trademark registration certificates or screenshots of trademark office websites are provided. As such, the Panel cannot, from the document presented, determine that the listed trademark registrations are evidence of Complainant’s trademark rights. However, as noted in the Complaint, “[t]he notoriety of the trade-name and trademark is therefore a fact which by itself constitutes proof of ownership and distinctiveness and Complainant’s legitimate rights.” Id. citing Google Inc. v. Chris Gillespie, FA 1434643 (Forum May 10, 2012). Also 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.”). As Complainant has submitted evidence of industry awards and accolades it has garnered over a number of years, and as the Respondent has not submitted a Response or made any other submission to challenge Complainant’s assertions, the Panel holds that sufficient evidence has been provided to establish rights in the GOOGLE mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <google-global.com> domain name is confusingly similar to the GOOGLE mark, as the name incorporates the mark in its entirety, merely adding the generic term “global” and the “.com” gTLD. The addition of a generic term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel determines the <google-global.com> domain name is confusingly similar to the 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 that 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 argues that Respondent has no rights or legitimate interests in the <google-global.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GOOGLE mark in any way. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate 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 WHOIS information of record identifies the registrant of the disputed domain name as “Tim Black / PPL LLC.,” and no information on the record indicates that Respondent is known otherwise or that it is authorized to use Complainant’s GOOGLE mark. The Panel therefore finds that Respondent does not have rights and legitimate interests in the <google-global.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <google-global.com> domain name is demonstrated by its failure to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent links users visiting the disputed domain name to a webpage that, while displaying the message “This site can’t be reached”, apparently attempts to download malware on Internet users’ computers. Use of a disputed domain name to distribute malicious software to users’ computers does not constitute a bona fide offering or a legitimate use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant contends that a check of the disputed domain name at a virus checking service confirms that the <google-global.com> website contains malware and it provides a screenshot from that service as evidence to support its claim. In light of the evidence before it, and in the absence of any submission by Respondent, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that in light of the global fame and notoriety of its GOOGLE mark, it is inconceivable that Respondent could have registered the <google-global.com> domain name without actual knowledge of Complainant's rights in the mark. Actual knowledge of a complainant’s mark is an adequate foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See NIKE INNOVATE C.V. v. Registration Private, Domains By Proxy, LLC / Gueijuan Xu / Xu Gueijuan, D2018-0360 (WIPO Apr. 27, 2018) (bad faith found, in part, because “the Complainant’s [NIKE] mark is one of the most valuable trademarks in the world.”). Complainant asserts that Respondent’s use of the entirety of the GOOGLE mark in the disputed domain name indicates that it had actual knowledge of Complainant’s rights in this globally famous mark. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark at the time it registered the disputed domain name.
Next, Complainant submits evidence that the disputed domain name does not resolve to any substantial website content and that it is impossible to conceive of any potential legitimate use of the disputed domain name. It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that Panels may consider all of the circumstances of a given case, including passive holding through non-use of a domain name, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, the evidence shows that, browsing to the disputed domain name yields a website displaying the message “This site can’t be reached” and Respondent has not submitted any evidence to refute this. The Panel therefore finds that Respondent is passively holding the domain name, which is confusingly similar to Complainant’s mark, and that this indicates bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, bad faith is also asserted as the website of the disputed domain name seeks to distribute malware. Use of a disputed domain name to distribute malware to Internet users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides a screenshot of a virus checking service that identifies the <google-global.com> domain as a phishing website. Phishing activities typically involve an attempt at monetary gain through fraud. The Panel thus finds that the evidence presented further supports the conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
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-global.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 28, 2020
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