Google LLC v. J C / Zen Marketing Group
Claim Number: FA2008001908533
Complainant is Google LLC (“Complainant”), represented by Brian J. Focarino of Cooley LLP, District of Columbia, USA. Respondent is J C / Zen Marketing Group (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlereputationmanager.com>, registered with Wild West Domains, 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 14, 2020; the Forum received payment on August 14, 2020.
On August 17, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <googlereputationmanager.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@googlereputationmanager.com. Also on August 18, 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 September 11, 2020, 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 is one the most highly recognized and widely used internet search services in the world.
Complainant has rights in the GOOGLE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <googlereputationmanager.com> domain name is confusingly similar to Complainant’s GOOGLE mark. Respondent incorporates the mark in its entirety and adds the generic terms “reputation” and “manager” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <googlereputationmanager.com> domain name as Respondent is not commonly known by the at-issue domain name, nor did Complainant authorize Respondent to use the GOOGLE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent misdirects internet users to a webpage that has no affiliation with Complainant in an attempt to pass itself off as Complainant.
Respondent registered and used the <googlereputationmanager.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant and create an impression that Respondent is somehow affiliated with Complainant all in furtherance of promoting questionable search engine related services. Respondent also had actual knowledge of Complainant’s rights in the GOOGLE mark due to the longstanding fame and use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in GOOGLE.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GOOGLE trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant so as to misdirect internet users to a webpage that has no affiliation with Complainant in an effort to promote dubious search engine related products or 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 name is confusingly similar to trademarks in which Complainant has rights.
Complainant’s USPTO trademark registration(s) for GOOGLE shows Complainant’s rights in mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <googlereputationmanager.com> domain name contains Complainant’s GOOGLE trademark followed by the generic term “reputationmanager.“ The domain name concludes with the top-level domain name “.com.” The differences between Complainant’s trademark and Respondent’s domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <googlereputationmanager.com> domain name is confusingly similar to Complainant’s GOOGLE 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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “J C/Zen Marketing Group” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <googlereputationmanager.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <googlereputationmanager.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Respondent uses the <googlereputationmanager.com> domain name to address a website that attempts to pass itself off as being sponsored by Complainant. The <googlereputationmanager.com> website displays Complainant’s GOOGLE mark and offers services that could be considered associated with Complainant’s business i.e. baseless online “reputation repair”/search engine optimization services. Respondent’s use of the domain name in this manner indicates 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 Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the at-issue domain name to give the false impression that it is affiliated with Complainant, when it is not. The at-issue <googlereputationmanager.com> domain name addresses a website displaying Complainant’s trademark and offering a baseless service that pretends it can repair one’s online reputation. Respondent’s use of the at-issue domain name in this manner demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv) and otherwise. See Google LLC v. David B. Dennis Jr., FA 1893200 (Forum May 12, 2020) (finding bad faith where Responded “attempt[ed] to attract Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon and likely to be for commercial gain…” and “giving the impression that interested individuals will receive information regarding Complainant.”); see also, The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website).
Additionally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark when it registered <googlereputationmanager.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s GOOGLE trademark and from the fact that Respondent displays Complainant’s trademark on its website and impersonates Complainant to further an apparent scam related to Complainant’s services. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name shows Respondent’s bad faith 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 <googlereputationmanager.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 14, 2020
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