Google Inc. v. Pooja Pandey / Innovative Businesss Solutions / Global PVT LTD / Global ITES PVT LTD
Claim Number: FA1602001660781
Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Pooja Pandey / Innovative Businesss Solutions / Global PVT LTD / Global ITES PVT LTD (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmail-support-australia.com> and <gmailsupports.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2016; the Forum received payment on February 12, 2016.
On February 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmail-support-australia.com> and <gmailsupports.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2016 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@gmail-support-australia.com, postmaster@gmailsupports.com. Also on February 22, 2016, 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates the Google search engine and Google electronic mail service (GMAIL). Complainant has rights in the GMAIL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.3,353,237 registered on December 11, 2007). Respondent’s <gmail-support-australia.com> and <gmailsupports.com> are confusingly similar to the GMAIL mark. Both of the disputed domains contain the entire mark, altered by the addition of the descriptive word “support(s),” and the generic top-level domain (“gTLD”) “.com.” In addition to this, the <gmail-support-australia.com> domain name has hyphens and the geographic term “australia.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names or any derivative of Complainant’s mark, nor has Respondent been licensed to use the mark. Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent has provided a resolving website that engages in a phishing scheme, attempting to collect sensitive login and personal information of Internet users. In the alternative, if Respondent is offering GMAIL support, such services directly compete with similar services that are offered by Complainant. Such use does not qualify as a bona fide offering or a legitimate noncommercial or fair use.
Respondent has registered and used the <gmail-support-australia.com> and <gmailsupports.com> domain names in bad faith. Respondent has endeavored to create confusion as to the affiliation of the disputed domain names, which is an attempt to phish for Internet users’ sensitive financial information for commercial gain pursuant to Policy ¶ 4(b)(iv). In the alternative, if Respondent is offering GMAIL support, such services directly compete with similar services that are offered by Complainant disrupting Complainant’s business. Respondent registered the disputed domain names in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the GMAIL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and operates the Google search engine and Google electronic mail service (GMAIL).
2. Complainant has rights in the GMAIL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,237 registered on December 11, 2007).
3. Respondent registered the <gmail-support-australia.com> domain name on October 13, 2015 and the <gmailsupports.com> domain name on September 29, 2014.
4. The disputed domain names resolve to a website that engages in a phishing scheme, attempting to collect sensitive login and personal information of Internet users. In the alternative, if Respondent is offering GMAIL support, such services directly compete with similar services that are offered 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 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 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.”).
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant supports this claim by pointing to the near-identical e-mail addresses used for the registrants as well as the almost identical format, content, and manner of use of the resolving webpages. The Panel therefore finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant owns and operates the Google search engine and Google electronic mail service (GMAIL). Complainant submits it has rights in the GMAIL mark through its registration with the USPTO (e.g., Reg. No.3,353,237 registered on December 11, 2007). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the GMAIL mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <gmail-support-australia.com> and <gmailsupports.com> domain names are identical or confusingly similar to Complainant’s GMAIL mark. Complainant maintains that Respondent’s <gmail-support-australia.com> and <gmailsupports.com> are confusingly similar to the GMAIL mark. Both of the disputed domains contain the entire GMAIL mark, altered by the addition of the descriptive word “support(s),” and the generic top-level domain gTLD “.com.” In addition to this, the <gmail-support-australia.com> domain name includes hyphens and the geographic term “australia.” Previous Panels have found that the addition of descriptive words, geographic terms, hyphens, and a gTLD insufficient in overcoming a finding of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s GMAIL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GMAIL mark and to use it in its domain names and has added the generic word “support(s)” and the geographic term “australia” respectively which do not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to support for Complainant’s GMAIL services and the provision of those services in Australia;
(b) Respondent registered the <gmail-support-australia.com> domain name on October 13, 2015 and the <gmailsupports.com> domain name on September 29, 2014;
(c) The domain names resolve to a website that engages in a phishing scheme, attempting to collect sensitive login and personal information of Internet users. In the alternative, if Respondent is offering GMAIL support, such services directly compete with similar services that are offered by Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant submits that Respondent is not commonly known by the <gmail-support-australia.com> and <gmailsupports.com> domain names. The Panel notes that the WHOIS information lists “Pooja Pandey” and “Global PVT LTD” as Registrants and that Respondent has failed to provide further evidence to indicate being commonly known by the domain names. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <gmail-support-australia.com> and <gmailsupports.com> domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is using the disputed domain names in furtherance of a phishing scheme aiming to collect sensitive personal information of Internet users, and that such use is not a bona fide offering or a legitimate noncommercial or fair use. Complainant has provided screenshots of Respondent’s resolving webpages which show links such as “Gmail Password Recovery,” “Gmail Account Recovery,” and “Gmail Hacked Support.” Complainant invites the Panel to accept that from these links Respondent gains personal information that it then presumably sells for a profit. Panels in the past have found that use of a domain name to run a phishing scheme fails to amount to a bona fide offering or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mite Ireland Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, as the Panel finds that Respondent is running a phishing scheme, it declines to find Respondent has rights under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also contends that even if Respondent is offering GMAIL technical supports such support constitutes a competing use as Complainant also offers such support. The Panel finds that making use of confusingly similar domain names to attract Internet users to a site that offers competing services 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel therefore finds that Respondent lacks rights and legitimate Interests under Policy ¶ 4(a)(ii) thus deterring others from acting in this manner.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent uses the <gmail-support-australia.com> and <gmailsupports.com> domain names for the purpose of disrupting Complainant’s business operations because Respondent uses the resolving website to offer GMAIL support in competition with Complainant. Complainant has provided screenshots of Respondent’s website, in Exhibit 8, in order to demonstrate this competitive use. Past panels have found similar competitive use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). As the Panel finds such use here, the Panel finds that Respondent has registered and used the <gmail-support-australia.com> and <gmailsupports.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith by intentionally attracting, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). Specifically, Complainant contends that Respondent attempted to have Complainant’s customers provide it with sensitive account login information and that access to such customers’ accounts clearly shows its attempt at commercial gain. Panels have agreed with such arguments. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). As the Panel accepts Complainant’s argument that Respondent’s use imputes an attempt to gain commercially, the Panel concludes that Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant alleges that Respondent is engaged in the practice of phishing, whereby Respondent attempts to capitalize on Complainant’s well-known mark to have Complainant’s customers provide it with sensitive account information. Past panels have found evidence of bad faith where a respondent’s disputed domain name redirects Internet users to a website that imitates the complainant’s website and is used to acquire personal information from the complainant’s clients fraudulently. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). The Panel agrees that such phishing behavior via the disputed domain names lends additional evidence to support a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that because of the fame and notoriety as well as the well-known status of Complainant’s mark, it is clear that Respondent registered the disputed domains with actual knowledge of Complainant’s mark. Previous panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. 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). Therefore, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <gmail-support-australia.com> and <gmailsupports.com> domain names using the GMAIL mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmail-support-australia.com> and <gmailsupports.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 23, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page