Google Inc. v. Privacy Protections Inc
Claim Number: FA1111001414441
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Privacy Protections Inc (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmal.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2011; the National Arbitration Forum received payment on November 8, 2011.
On November 7, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <gmal.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 November 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2011 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@gmal.com. Also on November 9, 2011, 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.
A timely Response was received and determined to be complete on November 30, 2011.
On December 5, 2011, a timely Additional Submission was received from the Complainant.
On December 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist. The Respondent in its Response had sought a three-member panel. However, it did not pay the required extra fee to the National Arbitration Forum within the requisite time. Accordingly, the case proceeded with a single-member Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 1998, the Complainant, which offers a wide range of products and services, has used the GMAIL mark in commerce to provide e-mail and electronic messaging systems. It has become one of the largest web-based e-mail service providers in the world with some 193 million active users as at November 2010. Its current services provide 7GB of free storage per user and are offered in 54 different languages. It has received various awards, including being ranked second in PC World’s “100 Best Products of 2005”.
The GMAIL mark identifies the Complainant’s web-based e-mail services. The mark has been extensively marketed and is exclusively identified with the Complainant, nationally in the United States and internationally in many other countries.
The Complainant owns numerous United States and other trademark registrations for the mark GMAIL dating back to April 1, 2004 and claiming use in United States commerce dating back to 1998. Details of those trademark registrations were listed by the Complainant.
Whois database records show that the present Respondent, Privacy Protection Inc, acquired registration of the disputed domain name some time after December 9, 2004 at the earliest.
As at October 24, 2011, the disputed domain name redirects internet visitors to <mail-rewardcenter.com>, a site that offers users prizes in exchange for completing “our” annual visitor survey. As at November 18, 2011, the redirection is to <promorewardsone.com> which has nearly identical content.
Respondent uses the site to bait Google’s misdirected users into completing a brief survey (related to internet habits), with the promise of providing them with an expensive technology product in return. Users are then tricked into (1) providing their email address, mailing address, and cell phone number; (2) entering contests; (3) signing up for recurring text message plans at a monthly charge; and (4) downloading an adware toolbar.
The page also notes in small print “check out our exclusive optional offer available”. Message & data rates may apply. Sign up today & receive interesting horoscpores right on your phone for only $9.99/month.” The fine print on that page states:
Summary Terms: This is an auto renewing subscription service that
will continue until canceled anytime by texting STOP to short code
26443. Available to users over 18 for $9.99 per month charged on
your wireless account or deducted from your prepaid balance for 3
alerts per week on Verizon.
Upon redirection to the survey site, an automated voice message informs the user that he or she has been selected to take part in an anonymous survey and will receive an exclusive reward as a “thank you.” After answering three basic questions about their online video watching habits, the misdirected consumers are invited to select their “reward” and enter their email address, cell phone number, and “shipping information” to continue. Users are then presented with offers to enter a contest and sign up for service consultations using the information provided. After clicking through those links, users are asked to “confirm” their “reward,” verify their cell phone number, and enter a PIN number that is sent to their cell phone via text message to “confirm” their “reward.” The page also notes in small print, “Check out our exclusive optional offer available today”.
The Respondent is accordingly engaged in a “phishing scheme,” a practice “intended to defraud consumers into revealing personal and proprietary information,” often through a website “attempting to pass itself off” as another entity. Habitat for Humanity International, Inc. v. Colin Shields, FA 1260203 (Nat. Arb. Forum June 16, 2009). The use of an infringing domain name for purposes of operating a phishing scheme is widely recognized as proof of a respondent’s lack of any right or legitimate interest in the domain name and registration/use in bad faith. See, e.g., Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007); see also ¶¶ 32, 39, infra 20.
The Respondent’s survey is described as “our annual visitor survey.” Because the Domain Name is not used in connection with any other type of legitimate business or services, the Complainant’s misdirected consumers are likely to understand the “our” to refer to the Complainant. Users are enticed to complete the survey with the offer of free expensive gifts, including a MacBook Air laptop (which retails at $899 and up), or an iPad 2
tablet (which retails at $499 and up).
By using the domain name in this manner, the Respondent is capitalizing on the near identity between the <gmal.com> Domain Name and the famous GMAIL Mark to generate revenue from consumers who are seeking Google’s services and who arrive at Respondent’s website by mistake. The Respondent’s use of the domain name in this manner demonstrates its bad faith registration and use of the domain name, as well as its lack of any legitimate rights or interests in the domain name, and supports a finding that the domain name is confusingly similar to the Complainant’s famous GMAIL Mark.
Google has used the GMAIL Marks continuously since well prior to December 9, 2004, the earliest possible registration date for the domain name. Thus, the Complainant owns rights in the GMAIL Mark that predate the registration date of the domain name. See, e.g., Google Inc. v. Dyndns, FA 1405326 (Nat. Arb. Forum Oct. 6, 2011) (“Due to Complainant’s longstanding use of its GMAIL mark, the Panel concludes that Complainant has established common law rights in its GMAIL mark under Policy ¶ 4(a)(i), dating back to January 20, 1998.”).
A domain name is “identical or confusingly similar” to a complainant’s mark where “some letters have been interchanged or replaced . . . in order to create confusion in the mind of users.” Urtici Kargo Servisi A.S. v. Yurticikargo Yurticikargo, D2003-0707 (WIPO Oct. 24, 2003). In registering the GMAL.COM domain name, Respondent has merely omitted the “I” in the famous GMAIL Mark. This addition is intended to capitalize on frequent user misspellings or typographical errors of the GMAIL Mark, and does not create a term recognized in the English language.
The disputed domain name is an example of typosquatting, “a process in which a domain name registrant attempts to register a confusingly similar domain name that differs from a protected mark only slightly by taking advantage of common typing errors.” Time Warner Inc. v. Zone MP3, FA 1008035 (Nat. Arb. Forum July 25, 2007). The “practice of typosquatting demonstrates a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”
The Respondent is not commonly known by the disputed domain name or any name containing Complainant’s GMAIL Mark. Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the domain name or the Mark as the Respondent’s name or nickname.
The Complainant has not authorized or licensed the Respondent to use any of its trademarks in any way or to register or use the domain name. Unlicensed, unauthorized use of domains incorporating a complainant’s trademark or nearly identical approximation is strong evidence that a respondent has no rights or legitimate interest in a domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA 1076561 (Oct. 26, 2007).
Neither can the Respondent claim that it is offering bona fide goods or services by redirecting visitors to a website that is intended to capitalize on users seeking Complainant’s GMAIL website and deceive them into mistakenly signing up for suspect text messaging plans or downloading adware toolbars. See Wachovia Corp. v. Carrington, WIPO Case No. D2002-0775 (October 2, 2002) (“Although Respondent has provided users with access to…purported surveys about users’ online experiences, these services are not ‘bona fide’ because Respondent is using the domain name[] in bad faith for the purpose of diverting users to his own site through confusion.”).
The Respondent likely derives substantial profits by redirecting users to the survey by signing users up for text messaging plans, contests, and other products and services. Moreover, in all likelihood, the Respondent sells the contact information provided by users in completing the survey. As such, the Respondent is improperly capitalizing on the GMAIL Mark, which does not amount to legitimate noncommercial or fair use of the domain name. The use of a nearly identical and confusingly similar domain name to redirect users to a fake survey cannot amount to a bona fide offering of services. GoDaddy.com, Inc. v. Chad Lovell, WIPO Case No. D2007-1289 (November 9, 2007).
The evidence overwhelmingly supports the conclusion that the Respondent registered and is using the domain name in bad faith. The fame and unique qualities of the GMAIL Mark, which was adopted and applied for by the Complainant prior to the registration of the disputed domain name, make it extremely unlikely that the Respondent created the disputed domain name independently. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat. Arb. Forum July 1, 2002).
The Respondent’s use of the disputed domain name to redirect users to a website that offers prizes in exchange for completing a survey and entering contact information (e.g., an email address and phone number) further establishes its bad faith. By registering the disputed domain name primarily for the purpose of disrupting the business of a competitor. Respondent not only capitalizes on a frequent misspelling of the famous GMAIL mark, but also attempts to confuse users into thinking that the disputed domain name is related to Google by using the same distinctive colors (blue, red, yellow, and green) found in Google’s trademarks. See, e.g., Microsoft Corp. v. MindKind, D2001-0193 (WIPO Apr. 20, 2011).
The disputed domain name redirects users to a page that is similar to the general look and feel of the GMAIL website and deceives consumers into believing that the associated website is sponsored by, affiliated with, or endorsed by Google when that is not in fact the case. See Embarq Management Company v. BizZoo Biz c/o Biz BizZoo.Biz, FA0706001010322 (Nat. Arb. Forum July 30, 2007) (redirecting users to a “website which imitates Complainant’s website and uses Complainant’s mark prominently on the websites in order to obtain personal information” confuses consumers “as to the source, affiliation, endorsement and sponsorship of the disputed domain names” and therefore is evidence of bad faith).
Given the Respondent’s registration of a domain name that is nearly identical to Complainant’s famous GMAIL Mark and is otherwise not an English word (or a known word in any other language), it is impossible to conceive of any potential legitimate use of the domain name. As such, the disputed domain name is being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003- 0882 (WIPO Dec. 18, 2003).
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.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, the Respondent “could not have chosen or subsequently used… its domain names 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.” Control Techniques Ltd.
v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
Furthermore, using a domain name to obtain a user’s personal information “is evidence of phishing and represents bad faith registration and use under Policy ¶ 4(a)(iii).” Embarq Management Company v. BizZoo Biz c/o Biz BizZoo.Biz, FA 1010322 (Nat. Arb. Forum July 30, 2007). The Respondent’s efforts to take advantage of misdirected consumers by mimicking the GMAIL website, collecting personal information, and signing those users up for contests and recurring text messaging plans amounts to clear bad faith registration and use.
The Respondent’s activities and website content appear to be part of a growing scheme involving “survey sites” offered at domain names nearly identical to well known brands in order to generate revenue. Websites adopting a similar format to Respondent’s websites can be found at http://goooogle.com, http://youtub.com, and http://gmiail.com, among countless others (including many involving other famous Internet brands). Whether the Respondent or another party controls these websites, their ubiquity and fraudulent nature (i.e., generating revenue through the collection of user data and enlisting misled consumers in recurring text messaging plans and other schemes) highlights Respondent’s bad faith here.
The Respondent relies on a privacy service to protect its true identity from disclosure. The Whois record states that it rejects all mail: see TDS Telecomms. Corp v Registrant , D2006-1620 (WIPO Mar. 3, 2007).
The procedural history of this dispute provides further evidence of the Respondent’s bad faith. The disputed domain name was the subject of a dispute involving two other domains initiated by Google in October 2011 against Whois Privacy Services Pty Ltd (identified at the time of filing as the registrant). After proceedings were initiated, the Respondent and two different entities were identified as the respective registrants of the domain names, and one of them wrote to NAF to advise that it was not related to or affiliated with the other registrants. The Complainant subsequently dismissed that proceeding and initiated this and two other proceedings, each against one of the three domains. Both the Respondent and another registrant have now filed near verbatim responses, evidence an obvious relationship between them.
B. Respondent
The disputed domain name is neither identical nor confusingly similar to the Complainant’s trademark and the Complainant has provided no proof of that assertion. The omission of the letter “i” in the disputed domain name removes any confusion with the Complainant’s registered trademark.
The Respondent is in the marketing and advertising business which it conducts from various websites, including that of the disputed domain name. The Respondent conducts surveys and questionnaires of various internet users.
The Complainant’s marks were registered with the United States Patent & Trademark Office (“USPTO”) for “communication services” and for “electronic mail services”, whereas, the Respondent’s web pages make no claim to email services. The Complainant’s trademarks relate to a business which does not intersect with the Respondent’s. Trademark law permits use of the same mark for different classes of goods and services. The Complainant has no enforceable right against the Respondent.
The word “mail” is generic and the Complainant cannot have exclusive rights to it. The letter “g” in the mark refers not to “Google” but to “global”. Prior to its registration by the Complainant, the GMAIL mark was registered to Precision Research Inc. which developed its “gmail” as a commercial internet blogging programme in 1994. “Global” is also a generic term. No secondary meaning for the word GMAIL could have accrued until after the Complainant purchased the trademark in 2005. Therefore, the Complainant’s mark was not sufficiently famous as at the trademark filing dates in April 2004.
There is no evidence of the Complainant’s use of the mark in commerce before then. A press release from the Complainant in April 2004 shows that the Complainant was “testing a preview release of GMAIL”. The GMAIL product was released only to a limited number of users and not to the general public for “use in commerce”. The Complainant noted in a prospectus in 2004 that the GMAIL mark was then unregistered. The use from 1998 to 2004 was for global and not Google as representing the “G” in GMAIL.
The Respondent had no knowledge of the mark in 2004 when it acquired the disputed domain name. At best, the registrations of the trademark and the domain name were simultaneous. The Complainant’s rights are not superior to the Respondent’s.
There is no proof of bad faith registration and use of the disputed domain name. There is no evidence indicating that the Respondent acquired the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant for valuable consideration. Nor did the Respondent register the disputed domain name in order to prevent the Complainant from reflecting its trademark in a domain name. Nor did the Respondent register the disputed domain name to disrupt the business of a competitor. The Complainant and the Respondent are in different businesses.
Nor has the Respondent attempted to attract internet users for commercial gain to its website 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 product or service. None of the Respondent’s website pages refers to Google or Gmail. It merely invites users to participate in a survey.
The Respondent has a legitimate interest in the disputed domain name because of its marketing and advertising business. The GMAIL mark is registered only for email services and not for services such as those provided by the Respondent.
The Complainant has experienced difficulties in enforcing the trademark in Germany where a company had registered <gmail.de> in 2000 and in the United Kingdom where a company had used a gmail name for a web application in 2002. In both cases, the use of the domain name predated the trademark registration of the Complainant.
C. Complainant’s Additional Submission
The Respondent registered the disputed domain name well after the Complainant acquired rights in the GMAIL mark. The Complainant’s rights in the mark dated back to 1998 through acquisition from a third party, Precision Research Inc. Its 2004 trademark registration shows a 1998 first use date. The Complainant’s press release on April 1, 2004 in regarding the public launch of the GMAIL service and a 2004 prospectus list GMAIL amongst the Complainant’s trademarks.
The USPTO did not refuse registration on the grounds that the term is generic and the registration is incontestable in these proceedings. A distinctive mark is capable of broad protection.
The disputed domain name differs from the Complainant’s trademark by the absence of one letter which would constitute a common mistyping of the trademarked word GMAIL. The Respondent’s website invites participation in “OUR annual visitor survey”. Completing the survey is said to enhance user experience – presumably experience with GMAIL service. The Respondent’s website maximises confusion and causes users to believe it is associated with the GMAIL service. A trademark does not need to be famous in order to be protected under the Policy.
Numerous Internet users have posted negative experiences about the Respondent’s website, confused as to its possible association with the Complainant. Examples of such postings were attached to the submissions.
The Respondent has produced no evidence as to:
(a) being known by or using the name GMAIL; or
(b) any legitimate market research business using the disputed domain name.
It has not satisfied any of the criteria under Paragraph 4(c) of the Policy.
The Respondent has offered no evidence of its “marketing and advertising services” nor given any documentation about its business. Nor does it identify the target consumers for its trend studies or give examples of its research findings. Its surveys are a pretext to sign up consumers for free offers and other products. The Respondent registered the disputed domain name with intent to take advantage of the similarity between the Complainant’s mark and the disputed domain name. No excuse was offered for adopting the disputed domain name by the Respondent giving rise to the influence that it was motivated by the popularity of the Complainant’s GMAIL service.
The Respondent has not refuted the Complainant’s evidence as to the commercial nature of the Respondent’s website. The Respondent solicits user contact information which can be sold to third parties by providing baits of free expensive gifts. Users are tricked into signing up for recurring “offers” which, on inspection, include a text-messaging plan, educational and health care solicitations, for example. This is not an offering of bona fide goods or services or a legitimate non-commercial or fair use as envisaged by Paragraph 4(c)(i) or (iii) of the Policy.
The Respondent’s activities and website content are part of a larger scheme offering “survey sites” at domain names nearly identical to well-known Internet brands (noted earlier). Each of these sites show logos similar to the well-known trademark and follow the same business model of a brief survey in exchange for prizes or gifts.
(a) The disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in the disputed domain name
(c) The Respondent registered and uses the disputed domain name 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 the 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.
The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The omission of one letter in the disputed domain name is not sufficient to eliminate the confusion. This is an example of the phenomenon known as “typosquatting” where a domain name differs from a trademark only by the omission, addition or repositioning of a single letter of the registered trademark. Many decisions under the Policy confirm this view – see, for example, Vallpak Direct Marketing Systems Inc. v Manila Industries Inc. (WIPO D2006-0714) – domain name “Vallpak”, trademark “Valpak”: and Pfizer Inc v BargainName.com (WIPO D2005-0299): domain name “Pfzer” – trademark Pfizer. See also the authorities cited in the Complainant’s submissions.
The evidence establishes that the Complainant had been using the trademark in commerce since 1998 – as the registration with the USPTO noted when the US trademark was registered in 2004. It is possible to claim rights in a common law mark existing before registration so long as there was a secondary meaning before that date. This view was taken recently by the Panel in Google Inc v Dyndns, FA 1405326 (Nat. Arb. Forum Oct. 6, 2011) and the present Panel endorses it.
Contrary to the Respondent’s submission, the Panel cannot question the Complainant’s trademark registrations which must be accepted as establishing the Complainant’s rights definitively. It is not enough to assert, as does the Respondent, that the trademarked name is “generic” because the trademark registration has been granted.
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied.
The Complainant gave the Respondent no rights to reflect its trademark in a domain name. Hence, the burden shifts to the Respondent to establish one of the situations under Paragraph 4(c) of the Policy.
In the Panel’s view, the Respondent has failed to establish any of these grounds. The Respondent is not known by the disputed domain name. Its evidence that it is conducting a bona fide offering of goods and services is very meagre and insufficient to discharge the burden of proof resting on the Respondent to satisfy Paragraph 4(c)(i) of the Policy.
All the Respondent has stated, without any supporting evidence, is that it offers “marketing and advertising services” and “brand studies”. There are none of the indicia of a bona fide research or marketing business. The operator is not identified. The Respondent’s modus operandi, as described in the Complainant’s contentions raises doubts about the legitimacy of the Respondent’s operations and departs from the notion of a bona fide business.
Furthermore, such an operation can hardly be a legitimate non-commercial use, as required by Paragraph 4(c)(iii) of the Policy.
The legal submissions of the Complainant, as recorded earlier, on this aspect of the case, are all adopted by the Panel. Accordingly, Paragraph 4(a)(ii) of the Policy has been satisfied.
At the earliest possible time of registration by the Respondent of the disputed domain name in 2004, the Complainant did not have a registered trademark. The Panel agrees with previous panels which have decided that a Complainant’s rights in a mark date back to the date of filing with USPTO (in this case, September 16, 1999). See The Planetary Society v. domainsforlife.com/Salvador Rosillo, D2001-1228 (WIPO Feb. 12, 2002); see also Hershey Co. v Reaves, FA 652743 (Nat. Arb. Forum Apr. 17, 2006).
Moreover, the Complainant has established that it had a common law trademark in the name GMAIL before the date of the trademark registration.
Difficulty is caused by the fact that the Complaint was not filed until some seven years after the disputed domain name had been registered. Although, in this Panel’s view, the equitable doctrine of laches does not apply to cases under the Policy, nevertheless a delay of this magnitude makes more difficult the task of a complainant in proving bad faith by a respondent at the date of registration, despite evidence of continuing bad faith use. The Complainant has offered no explanation for this delay of seven years in filing a complaint.
Despite this difficulty, the Panel considers that there was bad faith registration and continuing bad faith use in this case, for the following reasons:
(a) The Complainant has used the GMAIL mark since 1998 when its messaging services was launched and since the date of filing the trademark application with the USPTO in 1999. The Panel considers that it is highly likely that an operator, as sophisticated as the Respondent appears to be, would not have known about GMAIL at the date of registration of the disputed domain name;
(b) The disputed domain name clearly indicates a “typosquatting” operation. A user seeking to type in ‘GMAIL’ could easily omit one letter and end up on the Respondent’s website. The similarity between Gmail and Gmal – in the absence of any plausible explanation of the choice of name from the Respondent – invites skepticism about the Respondent’s explanations and indicates a deliberate attempt to “cash in” on Gmail’s fame. Numerous decisions under the Policy have found against typosquatters. Some are mentioned in the record of the Complainant’s submissions. See WIPO Overview of WiPO Panel Views on Selected UDRP Questions (2nd edition). (“WIPO Overview”) at paragraph 1.10.)
(c) “The registration of the domain name appears to serve no purpose other than to capture the user who mistakenly or inadvertently enters an incorrectly spelled version of the Complainant’s registered trademark when he or she is attempting to access the Complainant’s website.” See DaimlerChrysler Corporation v. Worshiping, Chrisler & Chr, aka Dream Media and aka Peter Conover , D2000-1272 (WIPO Jan. 18, 2001). The Panel adopts the above quotation as relevant in this case.
(d) The Respondent’s modus operandi is a ‘phishing’ operation which collects internet users’ addresses and other personal information. Previous decisions have found such an operation to be evidence of bad faith. See Juno Online Services Inc v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) and Hess Corporation v GR (NAF FA770909). The resultant creation of confusion indicates bad faith. Internet users could well think that the “our” survey relates to a survey operated by ‘Google’.
(e) The Respondent uses Google’s distinctive colours on its website – blue, yellow, red and green. These colours are found in the Complainant’s legitimate websites. Clearly, this usage by the Respondent indicates bad faith by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, application and endorsement of its site. Likewise, the page of the Respondent’s website, by its very appearance, deceives internet users.
(f) It is hard to conceive of a legitimate use for the disputed domain name which is so obviously connected to a well-known name. Its very use suggests opportunistic bad faith. See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
(g) The use of a privacy service, whilst not of itself an indication of bad faith, when taken into account with the above considerations is a pointer to bad faith. The fact that it rejects all mail – a fact stated in the Whois information – is also suspicious. One wonders why a legitimate market research business would be so secretive. See WIPO Overview at Paragraph 3.9.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmal.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker Panelist
Dated: December 21 , 2011
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