Google LLC v. Clémentine Minot
Claim Number: FA2202001982946
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Clémentine Minot (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--gmal-sya.com>, registered with OVH sas.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2022; the Forum received payment on February 2, 2022. The Complaint was received in English.
On February 3, 2022, OVH sas confirmed by e-mail to the Forum that the <xn--gmal-sya.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 3, 2022, the Forum served the English language Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of February 23, 2022 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@xn--gmal-sya.com. Also on February 3, 2022, the French and English language 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 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist. The Panel notes here that Respondent made an out-of-time reply to the Forum stating that its site did not work and attempting an explanation of its adoption and registration of the domain name. This is discussed later.
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 a formal Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes the French language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore French. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English because “the Punycode version of the Domain Name is in English and, importantly, the infringing and fraudulent website created and used by Respondent in association with the Domain Name was entirely in English, i.e., a counterfeit version of Google’s homepage.”
Were there any doubt about the strength of those arguments, the matter is put to rest by Respondent’s English language email to the Forum which shows a command of written English.
The Panel finds that Respondent read and understood the Complaint and was capable of filing a Response in English. In the circumstances the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in GMAIL since it holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but wrote informally to the Forum implying that it might have submitted a Response had the Forum’s website been working properly. Further, it submitted that
“Regarding the case I am a bit surprised and think there is a
misunderstanding. It is a test address I used for education purpose /
prank friends only - you won't find any communication or external use of
this email address nor any abuse, hacking or anything based on this
address nor any prejudice to google. A big laugh is the only benefit I
got from this address. Due to the weird characters in the name, it is
almost impossible to land on this page unless you are invited to it and
you really look for it (and not to gmail) - so I am equally surprised of
some of the accusations in the claim.
Of course I understand a big company's will to protect against all
possible abuses of its service, but i can reassure you that it is not
the case and that this address is not a menace for your customer.”
PRELIMINARY ADMINISTRATIVE MATTER: NO RESPONSE
Circumstances may arise justifying an extension of time to permit a respondent to file its response. Here, there is no evidence at all supporting Respondent’s assertion that the Forum website was faulty or unavailable. Further, it seems that Respondent has, in any event, said already what it had to say about its motivations in registering and using the domain name and the Panel has considered those statements in the Discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides email and electronic messaging services by reference to the trademark GMAIL;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 3,150,462, for GMAIL, registered October 3, 2006;
3. the disputed domain name was registered on December 21, 2019;
4. the disputed domain name is a Punycode iteration of an Internationalized Domain Name (“IDN”) where the domain name corresponds with the IDN, “gmaīl.com”;
5. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating the trademark; and
6. the domain name resolves to a website which uses Complainant’s trademark and mimics a log-in page which Internet users might expect to see on a website maintained by Complainant.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant provides evidence of its USPTO registration for the trademark GMAIL and so the Panel finds that Complainant has rights in that trademark.
Complainant submits that UDRP panelists treat “Punycode iterations of domain names in an identical manner with their IDN counterparts.” The citations raised by Complainant in support of that submission appear to take the argument no further than it existed at the time this Panel wrote its decision in Bittrex, Inc. v. clayt closiner / Caly Company. / bittrex acc, FA1801001766167 (Forum May 8, 2018) (“Bittrix”). At that time, it found that none of the frequently cited UDRP decisions (many reappearing in the Complaint here) directly confronted the question of whether, for the purposes of the Policy, an IDN expressed and registered in its Punycode form which bears no visual or phonetic resemblance to the at-issue trademark should be considered as either “identical” or “confusingly similar” to that trademark.
Nevertheless, the Panel repeats what it said in Bittrix - that whilst none of the citations relied on by Complainant cause it:
“… to depart from its in-principle reasoning … it takes the view here, in these undefended proceedings, that it is enough to follow current thinking which is to treat the Punycode registered domain name and its IDN expression as what has been sometimes called, ‘technically equivalent’”.
Accordingly, for the purpose of comparison of the domain name with the trademark it is well accepted that the gTLD, “.com” can be disregarded. Stripped of the gTLD, the term, “gmaīl” is virtually identical to the trademark and so the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The domain name holder is Clémentine Minot which does not indicate that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights of its own and Complainant has stated that it has not permitted Respondent to use its trademark. Further, Complainant provides screenshots of the webpage resolving from the disputed domain name which appears to imitate Complainant’s GMAIL log-in page.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The onus shifts to Respondent to establish a legitimate interest. Returning to Respondent’s email to the Forum, set out above, the Panel fails completely to see that there could be a “misunderstanding” and finds that Respondent’s use of the domain name poses exactly the type of “menace” which this Policy was framed to combat.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain name to be confusingly similar to the trademark. The Panel finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving webpage by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that webpage. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[v].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--gmal-sya.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 10, 2022
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting.
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