Google Inc. v. Andy Sacks
Claim Number: FA1309001521472
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Andy Sacks (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlemail-google.com>, registered with GODADDY.COM, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 26, 2013.
On September 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <googlemail-google.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 September 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2013 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@googlemail-google.com. Also on September 27, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
1. Respondent’s <googlemail-google.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googlemail-google.com> domain name.
3. Respondent registered and uses the <googlemail-google.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the well-known GOOGLE mark and holds registrations of the mark with authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502 registered September 14, 2004).
Respondent registered the <googlemail-google.com> domain name on April 7, 2013, and used it to resolve to a website displaying Complainant’s GOOGLE mark and logo, in an attempt to pass itself off as Complainant. Currently, the disputed domain name resolves to an inactive site.
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).
The Panel finds that Complainant has sufficiently established rights in its GOOGLE mark pursuant to Policy ¶ 4(a)(i) through registrations of the mark around the world, including with the USPTO. See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <googlemail-google.com> domain name is confusingly similar to Complainant’s GOOGLE mark because the domain name appropriates the GOOGLE mark in its entirety and merely adds the term “googlemail,” which is descriptive of the Gmail e-mail services provided by Complainant. The disputed domain name also adds a hyphen and the generic top-level domain (“gTLD”) “.com,” irrelevant for purposes of Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005), where the panel concluded that the addition of a term descriptive of the complainant’s business, the addition of a hyphen, and the addition of the gTLD “.com” were insufficient to distinguish the respondent’s domain name from the complainant’s mark. Accordingly, the Panel finds that the <googlemail-google.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known as <googlemail-google.com> under Policy ¶ 4(c)(ii), as Complainant has not authorized Respondent to use its GOOGLE mark in a domain name. The WHOIS information identifies the registrant of the disputed domain name as “Andy Sacks.” Previous panels have found that a respondent is not commonly known by the disputed domain name where the complainant has not given the respondent permission to use its mark in a domain name and there is no other evidence in the record, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain name. See, e.g., Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not using the <googlemail-google.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the domain name currently resolves to an inactive website that states only “web page at googlemail.google.com has been reported as a web forgery.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that the respondent’s failure to associate content with its disputed domain name was evidence that the respondent lacked rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Similarly, in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel found that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name. The Panel finds that Respondent currently fails to make an active use of the disputed domain name, and thus does not have rights under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant also alleges that Respondent previously used the <googlemail-google.com> domain name to attempt to pass itself off as Complainant, by replicating Complainant’s Gmail login page. Previous panels have determined that a respondent’s attempt to pass itself off as the complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding that the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
Complainant further contends that Respondent previously used the <googlemail-google.com> domain name for a phishing scheme, and provides a supporting screenshot. Previous panels have held that a respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) where the disputed domain name is used in furtherance of a phishing scheme seeking Internet users’ personal information. See, e.g., HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶ 4(a)(ii)). Thus, the Panel that Respondent’s phishing is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent previously used the <googlemail-google.com> to display Complainant’s GOOGLE mark and logo, mirroring the overall look and feel of Complainant’s Gmail login webpage. Respondent thus attempted to pass itself off as Complainant, and to “phish” for personal login information from Internet users. See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) where the panel held that the respondent had demonstrated bad faith under Policy ¶ 4(a)(iii) where the resolving website was a “doppelganger” site which closely resembled the complainant’s legitimate site, the purpose of which was to deceive the complainant’s customers into providing their login identification as well as other personal information; see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Accordingly, the Panel finds that Respondent has demonstrated bad faith registration and use of the <googlemail-google.com> domain name under Policy ¶ 4(a)(iii).
Respondent’s current failure to actively use the disputed domain name further demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). Previous panels have held that a respondent evidences bad faith under the Policy where the respondent makes no use of the disputed domain name and there is no evidence to suggest that respondent could have registered the domain name for a non-fringing use. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel thus finds further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant also alleges that given the notoriety of the GOOGLE mark, Respondent had actual notice of Complainant and its rights in the GOOGLE mark. The Panel agrees and finds that this is further evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlemail-google.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 29, 2013
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