Google LLC v. Kumar Anurag
Claim Number: FA2003001887509
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, United States. Respondent is Kumar Anurag (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-webmasters.com>, registered with 1&1 IONOS SE.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2020; the Forum received payment on March 9, 2020.
On March 10, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <google-webmasters.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 March 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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-webmasters.com. Also on March 12, 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 April 3, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the GOOGLE mark based on its portfolio of trademark registrations described below and the reputation and goodwill which it has established by use of the mark which it claims was created in 1997.
Complainant submits that its GOOGLE search engine has since become one of the most highly recognized and widely used Internet search services in the world. On February 1, 2017, the Brand Finance Global 500, which identifies the world’s most valuable brands, ranked GOOGLE as the most valuable brand in the world. Additionally, Google’s website has been recognized as one of the most popular destinations on the Internet for many years, well before the registration of the Domain Name. comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004.
Complainant argues that the disputed domain name is nearly identical or confusingly similar” Complainant’s mark because it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant adds that Respondent may not avoid likely confusion by simply adding descriptive or non-distinctive term and the addition of the word “webmasters” to Complainant’s trademark does not negate a finding of confusing similarity. See, e.g., Google Inc. v. Zhang, FA0901001245131 (Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the domain name googlevideodownload.com).
Complainant argues that the fame of the distinctive GOOGLE mark in combination with the non-distinctive added term “webmasters”, will cause users encountering the disputed domain name to mistakenly believe that the disputed domain name originates from, is associated with, or is sponsored by Complainant. See Google Inc. v. Gillespie, FA1203001434643 (Forum May 10, 2012) (concluding that the domain names <googlelivejournal.com>, <googlechiefs.com>, and <googlepoland.com>, among many others, confusingly similar to Complainant’s GOOGLE mark where the registrant incorporated non-distinctive generic and/or geographic terms to the GOOGLE mark, and ordering transfer of such domain names to Complainant.)
Asserting that Complainant has not authorized or licensed Respondent to use its registered GOOGLE mark, Complainant argues that Respondent’s unlicensed and unauthorized use of its mark is strong evidence that Respondent has no rights or legitimate interest in the disputed domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/aDomains, FA0709001076561 (Forum Oct. 26, 2007).
Complainant argues that it is impossible to conceive of any potential legitimate use of the disputed domain name. Here, the “[r]espondent has appropriated a trademark having a strong reputation and widely known.” See Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is [therefore] not possible to conceive of any plausible actual or contemplated active use of the domain name[s] by the [r]espondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Complainant further argues that Respondent’s use of the disputed domain name to direct Internet users to a website that prominently features the famous GOOGLE mark but is not sponsored or authorized by Google, “fail[s] to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009).
Complainant adds that Respondent cannot claim to be offering bona fide goods or services because he is using the disputed domain name to redirect Internet users who are seeking Complainant’s products and/or services to a website that has no affiliation with the Complainant. In doing so, Respondent attempts to pass himself off as Complainant which is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).” See Google Inc. v. Zharkov Maxim / Aleksey Lebedev, FA1306001506108 (Forum Sep. 2, 2013)
Complainant submits that the disputed domain name was registered in bad faith because the fame and unique qualities of the GOOGLE mark established prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the disputed domain name independently.
Furthermore, Complainant submits that where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used…its domain name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” See Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
Complainant adds that Respondent’s willful intent to violate Google’s intellectual property rights is further exhibited by the inclusion of the entirety of the GOOGLE mark in the disputed domain name. It is thus clear that Respondent intentionally registered the disputed domain name to improperly exploit its trademark value, rather than for some benign reason. See, e.g., The J. Jill Group, Inc. v. Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Forum Jul. 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J.JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).
Complainant refers a print-out of the website to which the disputed domain name resolves which is adduced in evidence as an annex to the Complaint. Complainant points out that this shows that the website features Complainant’s mark and purports to offer “Google Business Verification” services. Complainant submits that Respondent is thereby using the disputed domain in bad faith to pass itself off as Complainant or to mislead the general consuming public into believing that Complainant sponsors or is otherwise associated with Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the most widely recognized and its search engine is one of the most frequently used Internet search services in the world Complainant is the owner of a substantial portfolio of registrations for the GOOGLE mark in jurisdictions across the globe including the following in the jurisdiction of Respondent:
India registered trademark number 845041 registered on November 4, 2003;
India registered trademark number 1237958 registered on March 22, 2006;
India registered trademark number 1351909 registered on April 20, 2005;
India registered trademark number 1351910 registered on April 20, 2005;
India registered trademark number 1351911 registered on April 20, 2005;
India registered trademark number 1480385 registered on May 29, 2017;
India registered trademark number 2378924 registered on February 14, 2014.
Complainant’s primary website is located at <google.com>.
There is no information available about Respondent, who availed of a privacy service to redact his identity from the published WhoIs, except for that provided in the Complaint, the Registrar’s Whois and the information provided by the Registrar in response to the FORUM’s request for verification of the registration details of the disputed domain name in the course of this proceeding, which disclosed the identity of Respondent.
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 adduced uncontested evidence of its rights in the famous GOOGLE trademark established by its abovementioned trademark registrations, including in the jurisdiction where Respondent purports to be situated, and by the world-wide reputation of its GOOGLE search engine.
The disputed domain name <google-webmasters.com> consists of Complainant’s GOOGLE mark in its entirety in combination with a hyphen, the laudatory descriptive word “webmasters” and the generic Top-Level Domain (gTLD) <.com> extension. Complainant’s GOOGLE mark is the initial, dominant and only distinctive element in the disputed domain name. Neither the addition of the hyphen or the descriptive word “webmasters” add any distinguishing characteristic to the disputed domain name.
For the purposes of Policy ¶ 4(a)(i) in comparing the mark and domain name, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the GOOGLE mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not authorized or licensed Respondent to use its registered GOOGLE mark; that Respondent’s unlicensed and unauthorized use of its mark is strong evidence that Respondent has no rights or legitimate interest in the disputed domain name; that it is impossible to conceive of any potential legitimate use of the disputed domain name; that Respondent’s use of the disputed domain name to direct Internet users to a website that prominently features the famous GOOGLE mark but is not sponsored or authorized by Google fails to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); that Respondent cannot claim to be offering bona fide goods or services because he is using the disputed domain name to redirect Internet users who are seeking Complainant’s products and/or services to a website that has no affiliation with the Complainant; and furthermore that Respondent is attempting to pass himself off as Complainant which cannot be a bona fide offering of goods or services under Policy.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
GOOGLE is one of the world’s most famous trademarks and it is implausible that the disputed domain name was registered without actual knowledge of Complainant, its name, mark and search engine.
The print-out adduced in the annex to the Complainant illustrates that the website to which the disputed domain name resolves prominently features Complainant’s mark and gives the initial impression that it is associated with Complainant. The content on the website purports to offer “Google Business Verification” services and there is no indication that it is not associated with Complainant.
This Panel accepts Complainant’s submission that Respondent is thereby using the disputed domain in bad faith to pass itself off as Complainant or to mislead the general consuming public into believing that Complainant sponsors or is otherwise associated with Respondent’s website.
This Panel finds therefore, that, on the balance of probabilities, by using the disputed domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
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-webmasters.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________
James Bridgeman SC
Panelist
Dated: April 3, 2020
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